Patent claims to computer-virus scanning software included no language representing an improvement in computer function and were therefore patent-ineligible under 35 USC § 101. On this basis, the court in Glasswall Solutions Limited, and Glasswall (IP) Limited v. Clearswift Ltd, No. C16-1833 raj, (WAWD Nov. 29, 2017), granted defendant Clearswift’s motion to dismiss.
Plaintiff Glasswall asserted that Clearswift infringes claims of U.S. Patent Nos. 8,869,283 (‘the 283 patent) and 9,516,045 (the ‘045 patent). The patents have nearly identical specifications, and teach methods for protecting a computer from files including unwanted code (i.e., virus-protection). Clearswift argued that the patents claim patent-ineligible concepts.
Independent claim 1 from the ‘283 patent is representative, and recites:
A method for processing an electronic file to create a substitute electronic file containing only allowable content data, the method comprising:
receiving an electronic file containing content data encoded and arranged in accordance with a predetermined file type;
determining a purported predetermined file type of the received electronic file and an associated set of rules specifying values or range of values of allowable content data;
determining at least an allowable portion of the content data that conforms with the values or range of values specified in the set of rules corresponding to the determined purported predetermined file type;
extracting, from the electronic file, only the at least an allowable portion of content data;
creating a substitute electronic file in the purported file type, said substitute electronic file containing only the extracted allowable content data;
forwarding the substitute regenerated electronic file only if all of the content data from within the electronic file conforms to the values or range of values specified in the set of rules; and
forwarding the incoming electronic file if a portion, part or whole of the content data does not conform only when the intended recipient of the electronic file has pre-approved the predetermined file type when associated with the sender of electronic file.
The Court, applying the two-step Alice patent-eligibility analysis easily found these claims to be patent-ineligible.
In Alice step one, the Court found that the claims were directed to the abstract idea of filtering electronic files and data. The Court cited Intellectual Ventures I LLC v. Symantec Corp. in which the Federal Circuit found that similar claims for filtering emails were analogous to “people receiving paper mail . . . look[ing] at an envelope and discard[ing] certain letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the mail.” This was a “fundamental, long-prevalent” practice which constituted an abstract idea.
Glasswall argued that the claims “focus[ed] on a specific method for improving the relevant malware elimination technology.” The Court disagreed and noted that the claims failed to “indicate how these filtering mechanisms create an improvement in malware technology.” The Court further noted that the claims include limitations such as “allowable portion of the content data”, but “provide[d] no other details as to what that allowable portion is, or how it would be determined.”
In step 2 of the Alice analysis, the Court found that the claims provided no inventive step. The Court again cited Intellectual Ventures, stating that “[c]laims that amount to nothing significantly more than an instruction to apply [an] abstract idea . . . using some unspecified, generic computer, and in which each step does no more than require a generic computer to perform generic computer functions do not make an abstract idea patent-eligible.”
The Court analyzed the claims asserted by Glasswall and concluded that “[n]one of [the] limitations in the claim language disclose new, specific components or techniques, or are directed toward an improvement in the way a computer functions.” The claims do nothing more than implement an abstract idea on a generic computer.
Lessons for Practice
In order to provide an inventive step in software applications, consider drafting claims that go beyond what is being done, and include how it is being done. In order to be deemed directed to a technological improvement, claims should include “new, specific components or techniques.”