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Technical Improvements Providing Path to Patent Eligibility

Blog Post Submitted by John K. Whetzel

In recent years, software-centric patents have been increasingly at risk for receiving rejections from the US Patent Office under 35 U.S.C. § 101.  These rejections, based primarily on the Supreme Court’s decision in Alice Corporation Pty. Ltd. V. CLS Bank International, et al. (“Alice”), invoke a judicial exception to patent eligibility for applications which are alleged to be directed to “abstract ideas.” This area of law is unsettled and evolving.  Patent practitioners, examiners, and the courts have been struggling with this judicial exception, and many software-related patent applications (and patents) have suffered as a result.  For example, many patent claims related to software inventions are rejected by USPTO examiners as being related to the abstract idea of “gathering, analyzing, and displaying” data.  As USPTO examiners have a large amount of leeway in making such a rejection, with little required in the way of a burden of proof, practitioners can have difficulty overcoming the rejections once raised.

In the midst of the confusion related to what is an “abstract idea,” the Federal Circuit decision in Enfish, LLC v. Microsoft Corp (Fed. Cir. 2016) (“Enfish”) provided some clarity.  The decision in Enfish detailed that an “improvement to computer functionality” was not an abstract idea.  This decision was based on portions of the Alice decision that noted “that claims ‘purport[ing] to improve the functioning of the computer itself,’ or ‘improv[ing] an existing technological process’ might not succumb to the abstract idea exception.”  Enfish, slip op. at 10.  Since the Enfish decision, a number of decisions at the PTAB have focused on the technical improvement argument, providing a path to patent eligibility for software-based claims.

This path, since articulated in the Manual of Patent Examining Procedure at the USPTO, is based on the assertion that claims that are directed to improvements in computer functionality or “other technology” are not abstract.  Thus, by showing that a claim represents a technical improvement, an applicant may, in some circumstances, overcome a rejection based on patent eligibility.   Such an argument should involve two prongs: 1) showing a teaching in the specification on how the invention improves a technology and (2) establishing a clear nexus between the claim language and the improvement to technology.  Thus, both the claims and the specification should support the asserted technical improvement.

A recent case at the Federal Circuit illustrates a successful use of this “technical improvement” argument.  In Data Engine Technologies LLC v. Google LLC (Fed. Cir. 2018) (“Data Engine”), the court analyzed four patents (U.S. Patent Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146), all of which were found patent-ineligible by a district court.  On appeal, the Federal Circuit overturned some, but not all, of these decisions based on the conclusion that some of the claims represented a technical improvement, and were therefore not directed to an abstract idea.  Comparing the claims which were found eligible to those which were found ineligible provides an illustration of the distinction that can preserve claims based on the “technical improvement” rationale.  The Data Engine patents relate to the use of a virtual “tab” structure integrated into a selection of spreadsheets, meant to mimic the physical tabs that could be attached to a stack of files.  The patents describe both a user interface to display the virtual “tabs” as well as underlying mechanism to move between the spreadsheets using the tabs.

An example of a claim that was found to be patent-eligible is Claim 12 from U.S. Patent No. 5,590,259:

  1. In an electronic spreadsheet system for storing and manipulating information, a computer-implemented method of representing a three-dimensional spreadsheet on a screen display, the method comprising:

displaying on said screen display a first spreadsheet page from a plurality of spreadsheet pages, each of said spreadsheet pages comprising an array of information cells arranged in row and column format, at least some of said information cells storing user-supplied information and formulas operative on said user-supplied information, each of said information cells being uniquely identified by a spreadsheet page identifier, a column identifier, and a row identifier;

while displaying said first spreadsheet page, displaying a row of spreadsheet page identifiers along one side of said first spreadsheet page, each said spreadsheet page identifier being displayed as an image of a notebook tab on said screen display and indicating a single respective spreadsheet page, wherein at least one spreadsheet page identifier of said displayed row of spreadsheet page identifiers comprises at least one user-settable identifying character;

receiving user input for requesting display of a second spreadsheet page in response to selection with an input device of a spreadsheet page identifier for said second spreadsheet page;

in response to said receiving user input step, displaying said second spreadsheet page on said screen display in a manner so as to obscure said first spreadsheet page from display while continuing to display at least a portion of said row of spreadsheet page identifiers; and

receiving user input for entering a formula in a cell on said second spreadsheet page, said formula including a cell reference to a particular cell on another of said spreadsheet pages having a particular spreadsheet page identifier comprising at least one user-supplied identifying character, said cell reference comprising said at least one user-supplied identifying character for said particular spreadsheet page identifier together with said column identifier and said row identifier for said particular cell.

Key to understanding the court’s finding of patent eligibility for this claim is the court’s identification of a “technical improvement.”  Here, the court discusses that prior art computer spreadsheets were not user-friendly and navigation through such spreadsheets was difficult.  The court recognized that the tab structure provided a more intuitive way to move through complex spreadsheets “by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment.”  Data Engine, slip op. at 13.  Because the specification described the technical advantage of the configuration, and the claims themselves provided recitations related to the elements that provided the improvement (e.g., displaying page identifiers and switching between spreadsheets based on input to the page identifiers), the claim was held to be patent-eligible.

In contrast, an example claim from a similar Data Engine patent (Claim 1 of U.S. Patent No. 6,282,551) found to be patent-ineligible recites:

  1. In an electronic spreadsheet for processing alphanumeric information, said said [sic] electronic spreadsheet comprising a three-dimensional spreadsheet operative in a digital computer and including a plurality of cells for entering data and formulas, a method for organizing the three-dimensional spreadsheet comprising:

partitioning said plurality of cells into a plurality of two-dimensional cell matrices so that each of the two-dimensional cell matrices can be presented to a user as a spreadsheet page;

associating each of the cell matrices with a user-settable page identifier which serves as a unique identifier for said each cell matrix;

creating in a first cell of a first page at least one formula referencing a second cell of a second page said formula including the user-settable page identifier for the second page; and

storing said first and second pages of the plurality of cell matrices such that they appear to the user as being stored within a single file.

Here, the claim recites the same “page identifier” recited in the previous claim discussed above, but was nonetheless found patent-ineligible.  The Federal Circuit takes issue with the fact that the claim “generically recites ‘associating each of the cell matrices with a user-settable page identifier’ and does not recite the specific implementation of a notebook tab interface.” Data Engine, slip op. at 21.  The Federal Circuit found that the claim “is therefore not limited to the specific technical solution and improvement in electronic spreadsheet functionality that rendered [the previously discussed claim] patent eligible.” Data Engine, slip op. at 22.  Stated another way, although this second claim describes an overall structure that might support a tabbed interface, the claim itself doesn’t actually recite the ability to switch between spreadsheets using the tabs, which was the technical improvement in user navigation.  Thus, though both claims discuss the same “general” subject matter, only the claims which include recitations targeted at the specific technical improvement (e.g., user navigation) are found to be patent eligible.

While this notion of a “technical improvement” providing a path to patent eligibility for software patents is a welcome positive result for applicants, it nonetheless places a complex challenge on the patent application.  The application should expressly identify the technical improvement achieved by the invention in a way that can be clearly differentiated over art that may be cited in prosecution.  In addition, care needs to be taken such that the claims of the application provide an appropriate nexus between the claims and the technical improvement of the specification.  A missing (or inadequate) description in the specification of the technical improvement may create difficulties for the applicant during prosecution.  Drafting the patent specification and claims requires a clear strategy that is reinforced by a solid technical understanding of both the invention itself, as well as the technical environment in which the invention operates.  The application should not only explain the “how” of the invention, but also the “why.” If you have any questions on how these challenges might affect your patenting strategy, please do not hesitate to contact us.


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