U.S. Patent and Trademark Office Releases Memorandum on Recent Subject Matter Eligibility Decisions

On April 2, 2018, the U.S. Patent and Trademark Office released a memorandum to the Patent Examining Corps regarding recent subject matter eligibility decisions issued by the Federal Circuit. The memorandum discusses two recent decisions that found claims that improve computer technology are directed to patent-eligible subject matter rather than to an ineligible abstract idea. The memorandum and decisions are instructive for practitioners who draft patent applications, confront subject matter eligibility challenges or respond to USPTO rejections under 35 U.S.C. § 101.

In Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), the Court (Dyk, Linn, Hughes) found no error in the district court’s subject matter eligibility determination and unanimously held that the claims were patent-eligible under § 101 because they improved computer technology by protecting users against previously unknown viruses and enabled more flexible virus filtering. The invention recited specific steps to accomplish the desired result, and was a non-abstract improvement over traditional computer functionality and virus scanning techniques which only recognized the presence of previously-identified viruses.

Relying on recent Federal Circuit precedent, the Court stated that in cases involving software inventions, the inquiry into whether the claims are directed to an abstract idea often turns on whether the claims focus on a specific asserted improvement in computer capabilities. The claims at issue in Finjan are directed to a method of providing computer security by scanning a downloadable program for suspicious code such as viruses, and attaching the results of the scan to the downloadable program in the form of a security profile. The Court adopted a district court claim construction in finding that the behavior-based virus scan approach improved computer functionality because it determines whether the program performs hostile or potentially hostile operations.

In finding improved functionality, the Court refers to unclaimed features disclosed in the specification, such as the renaming or deleting files, as potentially dangerous or unwanted operations. In contrast to the improved behavior-based approach, conventional code-matching virus scans are limited to recognizing known viruses, typically by comparing the code in a downloadable file to a database of known suspicious code. The claimed security profile was found to improve computer functionality because it provides granular information about potentially suspicious code and can be used to protect against previously unknown viruses as well as known viruses that have been modified to avoid detection by conventional code-matching virus scans…

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