Federal Circuit: Here's What 'Improving the Function of a Computer' Means
The sometimes fractured court came together Friday to draw a clear line between patent-eligible tech inventions and abstract ideas.
March 06, 2020 at 06:33 PM
3 minute read
The U.S. Court of Appeals for the Federal Circuit has taken some flak in the last few years for inconsistent application of the U.S. Supreme Court's patent eligibility jurisprudence.
But on Friday the court drew a very bright line through one area of Section 101: the type of improvement to computer functioning that's necessary to transform an abstract idea into a patentable invention.
Judge Kimberly Moore authored a precedential opinion for a unanimous panel in Customedia Technologies v. Dish Network. She observed that patent owners have been "latching onto" language from the Supreme Court's 2014 decision Alice v. CLS Bank, which suggests that claims that "purport to improve the functioning of the computer" are eligible.
That means improving the function of the computer or the network platform itself, Moore wrote, citing past cases on network security, navigation of three-dimensional electronic spreadsheets and other examples. But it does not include improving a fundamental practice or abstract process "by invoking a computer merely as a tool," Moore wrote.
The patents before the court Friday are directed to data delivery systems that deploy programmable storage sections built into devices such as cable set top boxes and that can be leased or sold to advertisers based on user preferences. Customedia argued that its invention improves the ability to store advertising data, transfer data at improved speeds and efficiencies, and prevent system inoperability due to insufficient storage.
Moore observed that the only improvements identified in the claim specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task. "This is not what the Supreme Court meant by improving the functioning of the computer itself nor is it consistent with our precedent applying this concept," she wrote.
The ruling affirms a Patent Trial and Appeal Board (PTAB) decision that held the invention unpatentable.
Baker Botts partner Eliot Williams, based in Palo Alto, California, had the winning argument for Dish Network before both the PTAB and the Federal Circuit. He said Friday's decision will provide helpful guidance both to district courts and the patent office.
"The court clarified that although inventions directed to improvements in computer functionality are eligible for patenting, merely configuring a computer to provide functionality that it itself an abstract idea is insufficient to support patent eligibility," he said in a written statement.
Also representing Dish were Baker Botts partners Hopkins Guy III, Ali Dhanani and Michael Hawes.
Raymond Mort of The Mort Law Firm represented Customedia.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllSEC Fines 4 Companies $7M for Downplaying Breaches Tied to Massive SolarWinds Hack
DOJ, 8 State AGs Sue RealPage for Alleged Sherman Act Violations in Algorithmic Pricing Scheme
'We're Going to Tear the Barriers Down': Judge Prepares to Open App Market Floodgates on Google
AI Tools Creating Digital Paper Trails That Could Haunt Companies in Court
Law Firms Mentioned
Trending Stories
- 1Infant Formula Judge Sanctions Kirkland's Jim Hurst: 'Overtly Crossed the Lines'
- 2Guarantees Are Back, Whether Law Firms Want to Talk About Them or Not
- 3Election 2024: Nationwide Judicial Races and Ballot Measures to Watch
- 4How I Made Practice Group Chair: 'If You Love What You Do and Put the Time and Effort Into It, You Will Excel,' Says Lisa Saul of Forde & O'Meara
- 5Abbott, Mead Johnson Win Defense Verdict Over Preemie Infant Formula
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250