Recent court decisions affecting U.S. patent law and the role of a software expert witnesses

Since the U.S. Supreme Court made its decision in Alice Corp. v. CLS Bank International on June 19, 2014, the scope of what is patentable with respect to software inventions has continued to evolve as a result of later court decisions. After a brief synopsis of the changes that were brought by the Alice case, this article will cover two notable subsequent cases decided by the U.S. Court of Appeals for the Federal Circuit (CAFC). Given to the frequent shifts in judicial interpretation of what is deemed patent-eligible (particularly with regard to software-related inventions), these cases highlight the importance of having an experienced software expert witness when involved in software patent litigation.

As it pertains to software, in Alice the Court decided that for an invention to be patentable, the claims of the patent application must be directed to something significantly more than merely an abstract idea.  The Court stated that “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application. (Citation omitted). A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]’” (Alice at 2357) and concluded that the method claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent eligible invention. (Id.)  Consequently, immediately after the Alice decision, many business-method software patent applications requiring generic computer implementation were found to not be patent-eligible because the claims were ruled as being directed to abstract ideas while also not containing any additional elements that amounted to significantly more than merely an abstract idea. This situation remained until further court cases were brought to challenge how Alice should be applied.

One significant case to alter the interpretation of whether software patent claims are patent-eligible was Enfish, LLC v. Microsoft Corp., which was decided by the CAFC on May 12, 2016. In Enfish, the court ruled that the software patent claims at issue “are directed to a specific implementation of a solution to a problem in the software arts. Accordingly, we find the claims at issue are not directed to an abstract idea.” Thus, because the software patent claims were not directed to an abstract idea, there was no need to proceed to the second step of the Alice analysis to determine if the claims contained additional elements that amounted to significantly more than merely an abstract idea. In practice, the result of Enfish was that software patent claims are not automatically or inherently abstract ideas or concepts, and thus must be analyzed under step one of the Alice patent to determine if it is directed to a patent ineligible concept.

Finjan, Inc. v. Blue Coat Systems, Inc., recently decided by the CAFC on January 10, 2018, further addressed what patent claims are considered abstract. Blue Coat Systems had argued that Finjan’s claims, while directed to a new idea, remained abstract because they do not sufficiently describe how to implement that idea. The Finjan court ruled that the Finjan patent “claims recite more than a mere result. Instead, they recite specific steps … that accomplish the desired result.” The takeaway is that software comprising an inventive arrangement/process for accomplishing a specified result can be considered non-abstract patent eligible subject matter that satisfies step one of Alice without need to look for additional features under Alice step two.

The detailed analysis and technical discussion contained in the Alice, Enfish, and Finjan court decisions demonstrates the need for experienced software expert witnesses in software litigation. Indeed, the nuanced changes in these standards surrounding software patents and patent-eligible subject matter makes the role of software expert witnesses in software patent litigation invaluable in assisting the parties, their counsel, the judge, and the jurors to sort out what is and what is not an abstract concept or idea in the software and hardware context, and whether an inventive concept has or has not been added to such abstract concept to transform it into a patent eligible invention (i.e. one that solves a technological or scientific problem). This process is highly complex and requires someone capable of understanding the distinctions and details of the claims, the history and building blocks of the technology in question, as well as the intricacies of one or more potentially large code bases. Ideally, that same person can also translate such complexity in to a less technical form to make it understandable for the non-technical people involved.