February, 14th, 2017

By Wesley W. Whitmyer, Jr.

Summary Judgment decisions from California, Texas and Delaware early in 2017 refuse to find asserted software patents invalid under 35 USC § 101 after applying the first step of Alice Corp v. CLS Bank, 134 S.Ct. 2347 (2014).

US Pat. Nos. RE 43,500, 43,528 and 43,529, all relating to computer program products and methods for managing malware downloaded from a network owned by Alfonso Cioffi, were asserted against Google in Texas. C/A No. 2-13-cv-00103. US Pat. No. 5,544,360 entitled, “Method for accessing computer files and data, using linked categories assigned to each data file record on entry of the data file record” and owned by Speedtrack, was asserted against Amazon in California. C/A No. 4-09-cv-04479. And US Pat. No. 8,539,047 entitled, “Apparatus, method and system for a tunneling client access point” and owned by IOEngine, was asserted against Interactive Media Corp. in Delaware. C/A No. 14-1571-GMS.

In Texas, USMJ Payne reinforced that under Alice step 1 it is the accused infringer’s burden to identify an “abstract idea” to which the asserted claim is directed in order to invalidate the claim under § 101. Noting that “[defendant’s] argument rests on the false presumption that known computer components cannot be arranged unconventionally so as to take the invention away from the abstract,” USMJ Payne found that representative claim 30 was “directed to a particularized method that is, as a factual matter, an improvement to existing computer-related technology.” Further, “a jury trial will at least facilitate the Court’s determination.”

In California, USDJ White found that “the claimed invention is not merely an abstract idea, but rather the ‘360 Patent claims an improved method for accessing files in a data storage system of a computer. The description of the invention and the claims created a technological solution to the problems that had existed with conventional file access methods.”

In Delaware, the accused infringer argued that the claims of the ‘047 patent were invalid under Alice step 1 as generally directed to the abstract idea of providing communication with computing devices. USDJ Sleet, however, agreed with the patent owner that the claims “recite a specific arrangement of components and a very specific implementation and structure of the executable program code,” which made them patent eligible under § 101.

Practice tip: In drafting computer-related invention claims or defending a § 101 SJ motion: 1) present a specific arrangement of computing components (even if they are all old), 2) present a specific implementation and structure of computer code, and 3) articulate an improvement or technical solution to existing computer-related problems.

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