This document summarizes several 2016 Federal Circuit court decisions regarding software patentability. Key points include: patents were upheld for software solutions to technical problems, while those merely applying existing technology to a business problem were rejected. Specifically, patents on self-referential databases, distributed data enhancement networks, and automated 3D animation using specific rules were found eligible. Conversely, patents on anonymous loan shopping, content filtering, and power grid monitoring were found to recite only abstract ideas without additional inventive concepts. The document provides practice tips for drafting software patents, such as defining the technical problem and claiming the technical solution.

1. Software Patentability
v.2.0.1.6
January 19, 2017
A Review of 2016 Federal Circuit Opinions

2. In a Nutshell
• Winners: Pure software solutions to technical
problems
– Enfish, LLC v. Microsoft Corp.
– BASCOM Global Internet Servs. v. AT&T
Mobility LLC
– McRO, Inc. v. Bandai Namco Games Am. Inc.
– Amdocs (Isr.) Ltd. v. Openet Telecom, Inc. (an
outlier?)
• Losers: Everybody that lost in 2015
– Claims reciting RESULTS – the “WHAT”
– Claims not reciting DETAILS – the “HOW”

3. Mortg. Grader, Inc. v. First Choice Loan Servs
• Abstract Idea: “anonymous loan shopping”
• The steps “could all be performed by humans
without a computer”
• Only adding generic computer components.
– Does not improve the functioning of the
computer itself
– No improvement in any other technology or
technical field.
– Does not solve a problem unique to tech.
– Not adequately tied to “a particular machine or
apparatus”
• NOT patent eligible

4. Enfish, LLC v. Microsoft Corp.
• Not all technology advances are “defined by
physical features”
• Pure Software: “Self Referential data table”:
– Eliminates rigidly defined records with fixed fields
– Configures memory as a logical table with logical
rows and columns defining logical cells
– Cells store information about columns
– Columns can be added by adding rows
• Directed to a specific improvement to the way
computers operate
– Not an abstract formula or mathematical principal
– Not conventional steps performed on computer
• Improvement on the way computer stores and
retrieves data in memory

5. TLI Communs. LLC v. AV Auto., L.L.C.
• Abstract Idea: Classifying and storing digital
images in an organized manner
• The steps “could all be performed by humans
without a computer”
• Using generic conventional computer tech
– Does not improve the functioning of the
computer itself
– No improvement in any other technology or
technical field
– Does not solve a problem unique to networks
• NOT patent eligible

6. BASCOM Global Internet Servs. v. AT&T Mobility LLC
• Abstract Idea: Filtering content on the internet
• “Something More”
– Not just an abstract idea using generic tech
– Claims do not preempt all ways of filtering
content on the Internet
– DC erred: Considered only components
separately, not the combination
– The inventive concept is a filtering tool at a
specific location, remote from the end-users, with
customizable filtering features specific to each
end user
• Tech solution: Provides advantages of local
filtering at a remote ISP.

7. Shortridge v. Found. Constr. Payroll Serv.
• Things NOT to do: Put “computer
implemented business method” in your
Abstract
• Abstract idea: cataloging labor data
• Using generic conventional computer tech
– Does not improve the functioning of the
computer itself
– Not solving a uniquely technical problem
– Only performing a business practice using
conventional tech
• NOT patent eligible

8. LendingTree, LLC v. Zillow, Inc.
• Abstract idea: a loan-application
clearinghouse, i.e. coordinating loans
• Using generic conventional computer tech to
address a very old business problem
– Nothing more than facilitating the claimed loan-
application process using generic technology
– Does not improve the functioning of the
computer itself
– Not solving a uniquely technical problem
– Only performing a business practice using
conventional tech
• NOT patent eligible

9. Elec. Power Group, LLC v. Alstom S.A
• CAFC: Falls into a familiar class of claims
"directed to" a patent-ineligible concept
• Abstract idea: Power grid monitoring
– Nothing but selecting, collecting, analyzing, and
displaying certain results
– Nothing but an ordinary mental process
– “result-focused, functional character of claim
language has been a frequent feature of claims held
ineligible” -- especially when “using generic
computer and network technology to carry out
economic transactions.
• Theme: CAFC says claim the “how” (details) not
the “what” (results)
• NOT patent eligible

10. In re Chorna
• An "organized securities exchange, commodities
exchange, alternative trading system, and 'over
the counter' system."
• Abstract idea: Same as Alice Corp
– "intermediated settlement, i.e., the use of a third
party to mitigate settlement risk [also known as a
clearing house].”
• No something more here
– No improvement to computer tech
– Using generic computer to issue automated
instructions
– Claims are directed at financial instruments that are
valued using an allocation formula and are traded
and cleared through conventional processes
• NOT patent eligible

11. TDE Petroleum Data Solutions, Inc. v. AKM Enter.
• Abstract Idea: Like Electric Power - selecting,
collecting, analyzing but without the displaying
• Involves monitoring state of an oil well using
known tech
• Nothing more claimed here
– “the specification arguably provides specific
embodiments for the step of ‘automatically selecting
one of the states as the state of the well operation’”
– The claim “recites none of those details.”
– “the claims of the '812 patent recite the what of the
invention, but none of the how that is necessary to
turn the abstract idea into a patent-eligible
application.”
• NOT patent eligible

12. McRO, Inc. v. Bandai Namco Games Am. Inc.
• Abstract Idea
– DC: automated rules-based use of morph targets
and delta sets for lip-synchronized three-dimensional
animation
– CAFC: DC “avoid oversimplifying the claims” – fails
“to account for the specific requirements”
• Patent is “focused on a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type
– an animator's process was driven by subjective
determinations rather than specific, limited
mathematical rules
– uses a combined order of specific rules that renders
information into a specific format that is then used
and applied to create desired results: a sequence of
synchronized, animated characters

13. McRO, Inc. Cont.
• Patent is not
– Routine or conventional: No evidence animators
used these rules in the past, with or without
computers
– Simply "organizing [existing] information into a new
form“
– Carrying out a fundamental economic practice
– Tangible. . . But it doesn’t have to be
• “By incorporating the specific features of the
rules as claim limitations, claim 1 is limited to a
specific process for automatically animating
characters using particular information and
techniques”
• No preemption problem

14. Affinity Labs of Tex., LLC v. Amazon.com, Inc.
• Abstract Idea: delivering user-selected media
content to portable devices
• Nothing more here
– Conventional / generic tech
– “the claims do no more than describe a desired
function or outcome, without providing any
limiting detail that confines the claim to a
particular solution to an identified problem”
– “features set forth are described generically
rather than with specificity necessary to show
how those components provide a concrete
solution to the problem addressed by the
patent”
• NOT patent eligible

15. Affinity Labs of Tex. v. DIRECTV, LLC
• Abstract Idea: providing out-of-region access to
regional broadcast content
• No “something more”
– Only recites the general concept of out-of-region
delivery of broadcast content through the use of
conventional devices
– “Result-focused, functional claims” only limited to
cellular telephone with graphical user interface
• Patent is not
– directed to the solution of a technological problem
– directed to an improvement in computer or network
functionality
• NOT patent eligible

16. Intellectual Ventures I LLC v. Symantec Corp.
• Abstract Idea: filtering files/e-mail (virus/spam
protection)
• No “something more”
– No improvement to the functioning of the
computer
– Uses generic computers to perform generic
computer functions.
– Recites no improvement to conventional virus
screening software
• NOT patent eligible

17. FairWarning IP, LLC v. Iatric Sys.
• Abstract Idea: analyzing records of human
activity to detect suspicious behavior
• No “something more”
– No improvement to the functioning of the
computer
– Argument that this is technological advance
relating to accessing and combining disparate
information sources won’t fly because “its
claims do not recite any such improvement.”
– Claims directed to the broad concept of
monitoring audit log data.
• NOT patent eligible

18. Synopsys, Inc. v. Mentor Graphics Corp.
• Abstract Idea: translating a functional
description of a logic circuit into a hardware
component description of the logic circuit
• No “something more”
– Mental process
– The claims do not require a computer. . . So you
can’t characterize this as an improvement to a
computer
– No technical advance in the claims
• NOT patent eligible

19. Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.
• Four patents: filtering, aggregating, and
reporting network usage information
• Previous appeal, CAFC approved and
expanded on the DC’s claim construction of
certain key terms
• This appeal CAFC says
– Claims involve an unconventional tech solution
(enhancing data in a distributed fashion)
– to a tech problem (massive record flows which
previously required massive databases)
– specific to computer networks

20. Amdocs cont.
• Dissent:
– Never really said whether this is directed to an
abstract idea or said what it is
– Relying on prior claim construction for concepts
not in the claim
– Relying on the specification to “import innovative
limitations into the claims”
“Inquiry is about whether the claims are directed to a
patent-eligible invention, not whether the specification
is so directed.”
– Eligibility determination rests on construction of
terms that is not in all the claims

21. Tranxition, Inc. v. Lenovo (United States) Inc
• Abstract Idea: migration, or transitioning, of
settings between two computers
• No “something more”
– No improvement to the functioning of the
computer
– Stating an abstract idea while only adding the
words “apply it” with a computer
– Routine conventional activities
• NOT patent eligible

22. Apple, Inc. v. Ameranth, Inc.
• Abstract Idea: generating [restaurant] menus
• No “something more”
– Ameranth argued some of this was “difficult”, and
this “difficulty” means it can’t be abstract
– “The difficulty of the programming details for this
functionality is immaterial because these
details are not recited in the actual claims.”
– “The degree of difficulty in implementing an
abstract idea in this circumstance does not itself
render an abstract idea patentable.”
• NOT patent eligible

23. Practice Tips for Software
• Define the technical problem, claim the
solution
• Functional claiming is not dead: Claim more
“how”, less “what”
• New life for patents on pure software. Absent
controlling a machine:
– Can it be presented as a software solution to a
technical problem?
– Does it make the computer do less work, fewer
steps, faster/fewer calculations?
– But you have to claim it.

24. Practice Tips Cont.
• Patents solving business problems still face a
tough road through USPTO and CAFC
• Do not include the words “computer
implemented business method” in your
application
• If you want to argue this is an improvement to
a computer, don’t forget to recite the computer