The U.S. Court of Appeals for the Federal Circuit confirmed the invalidation of claims in two patents, and reversed the district court’s finding that two other patents in the same family were invalid for lack of subject-matter ineligibility, in Uniloc USA, Inc. v. ADP, LLC, No. 2018-1132, 2019 U.S. App. LEXIS 15507 (Fed. Cir. May 24, 2019). For the first patent, the Court stated that the claims recited a particular improvement in how centralized distribution of software was accomplished. In particular, the panel focused on the use of a file packet to enable the initiating on-demand registration of an application for distribution. It emphasized that the addition of the file packet limitation during prosecution was central to the patent’s allowance.
The panel concluded that the claims of the second patent were directed to a particular way of enabling on-demand installation of an application incorporating preferences from two different sources. The patent claims accomplished this result by adding the application manager and configuration manager as additions to each application utilizing a centralized server. The Court reasoned that positioning these components on the application server, combined with the application launcher on the client computer, allowed customization by both the administrator and the user in such a way that the installation can proceed on-demand with both sets of preferences. These kinds of network-specific details that differed from how application distribution was previously handled ensured the claims survived the inquiry into whether they covered abstract ideas.
In the third patent, the Court found that the claims were directed to using a desktop interface to access a conventional application server using conventional software, which was not an improvement in network architecture. It noted that the alleged functional improvements in efficiency arose wholly out of the conventional advantages of using networked computers as tools, not a particular improvement in the computer or network. Finally, the Federal Circuit stated that the claims of the fourth patent were directed to the abstract idea of providing an unavailability indication or an availability indication based on at least one of a user identity based policy, an administrator policy override definition or a user policy override definition. It characterized these claims as nothing more than collecting and displaying already available information.
This case illustrates how important it can be to include technical details in patent claims, and discuss how those technical details represent an improvement over conventional solutions in patent specifications, to increase the likelihood that the claims will survive a subject-matter eligibility challenge. In light of recent trends, U.S. courts looking for an explanation why a claimed invention represents a technological advance meriting patent protection expect to find that explanation in the patent itself and in the prosecution history. The applicant, by its patent drafters and prosecutors, is in the best position to set forth what is and is not the invention, reveal the invention’s details, why they matter, and why they amounted to more than just taking a pre-Internet business practice and straightforwardly implementing that practice on a computer.
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