The Federal Circuit recently provided strategic guidance for defending software claims against Alice challenges that claims recite ineligible patent subject matter under 35 U.S.C. § 101. In Mentone Solutions LLC v. Digi International Inc., the Federal Circuit reversed the District Court’s dismissal based on the lower court’s ruling that the representative patent claim was only directed to an ineligible abstract idea without an inventive concept. Here, the defendant had argued that claim 5 of U.S. Patent No. 6,952,413 was directed towards allocating data channels using shifted uplink status flags in cellular mobile stations, and therefore was ineligible. On appeal, the Federal Circuit reversed, finding the claim not directed to an abstract idea, because it was directed to improving the functionality of a computer.
Guidance Based on the CAFC Decision
The Mentone decision, while non-precedential, provides further insight into how to overcome § 101 challenges, such as using coined terms by the inventor in the claim language, depicting the technical deficiencies of the existing art and technical advantages of the invention in the figures, and reciting specific claim language that captures the technical advantages of the specific technical problem. Once the patent application’s specification has been drafted and submitted, long before litigation commences, these strategies can no longer be implemented. Practitioners should therefore be mindful while drafting the specification to address these areas that may build in natural Alice immunity, thereby enhancing the value of the patent assets.
The Patent-Eligible Claim of U.S. Patent No. 6,952,413
The claim at issue provided a series of method steps related to allocating resources on packet data channels:
5. A multiple access communication method in a mobile station, comprising the steps of:
receiving an assignment of at least a first PDCH (packet data channel) and a second PDCH;
monitoring an assigned PDCH to detect a[n uplink status flag (“USF”)] USF; and
transmitting on an assigned PDCH corresponding to the USF,
wherein (i) if shifted USF operation is not used then a first assigned PDCH is monitored to detect a USF corresponding to the first assigned PDCH and (ii) if the shifted USF operation is used then a second assigned PDCH is monitored to detect the USF corresponding to the first assigned PDCH and a USF corresponding to the second assigned PDCH.
The claim covers a method for communication in cellular mobile stations. According to the method, the mobile stations can allocate a packet data channel (PDCH) to be used for downlink and uplink operations. Downlink operations include receiving information from the network and uplink operations include transmitting information to the network.
Uplink status flags can indicate whether a packet data channel is assigned to switch from receiving information from a network (e.g., downlink operations) to transferring information to a network (e.g., uplink operations). But sometimes the assignment for the PDCH to switch cannot be carried out due to the fixed timing relationship and turn-around time required between the downlink signaling and the subsequent uplink operation . This inability to assign a PDCH for uplink operations reduces the availability of uplink operations, thereby reducing the flow of data and flexibility of response to changing conditions.
The claim thus utilizes shifted uplink status flags (“shifted USFs”) to control access to the PDCHs, enabling the mobile station to switch to uplink operations more effectively.
Claim 5 is Not Directed to an Abstract Idea – Court Reasoning and Analysis
The Federal Circuit rejected the view that the claim was simply the abstract idea of “receiving an uplink status flag and transmitting data during the appropriate timeslots.” Instead, the Federal Circuit found the patent improved computers by claiming USFs that broke the fixed timing relationship between the receipt of the USF during a downlink operation and the subsequent uplink operations. These improvements addressed the data-network problem explained by the patent with respect to USFs.
The Court relied on several features of the claim language and specification to establish claim 5 as patent eligible under § 101. First, the claim recited “shifted USF,” which was a term coined by the inventor. Second, the claim recited specific capabilities in response to detecting a shifted USF operation, such as monitoring a second assigned PDCH to “detect the USF corresponding to the first assigned PDCH and a USF corresponding to the second assigned PDCH” and transmitting on both PDCHs accordingly. Third, claim 5 captured the technical improvement over the existing systems i.e., breaking the fixed relationship in the timing of downlink allocation signaling. Finally, the specification showed an example of the deficiency in the prior art (such as the impermissible configuration of Figure 3) and proposed a solution: a new configuration using a shifted USF that enables the mobile station sufficient turn-around time to switch from downlink operations to uplink operations.
As to the specification’s description of the technical problems and technical advantages, the patent further presented figures depicting the limitations of the prior art and the corresponding technical solutions. For example, Figures 2 and 3 detail the limitations of a USF due to slot allocation constraints related to the fixed timing relationship. Additionally, Figures 4 and 5 captured the technical solution by showing the mobile stations monitoring the 2nd downlink slot for the shifted USF instead of the 1st downlink slot for the first USF, and Figure 7 shows how the elements of claim 5 function.
The decision provides direction regarding techniques patent practitioners can employ to refute arguments that unfairly reduce software claims to a mere ineligible abstract idea at step one under § 101.
Patent drafters may benefit from depicting justifications (where possible) using diagrams of the claimed advantages over the prior art. In addition, the patent drafters may include discussions of: (1) coined terms used in the claims that address the problems identified in the specification, (2) how the invention improves on prior art, and (3) the figures that depict the specific steps to carry out the technical advantages. Litigants can later point to these figures depicting the technical problems and technical solutions to overcome Alice and support a conclusion of patent eligible claims.