Patent Assertion Entity’s Claims to Malware Detection Invalidated as an Abstract Idea

The U.S. Court of Appeals for the Federal Circuit affirmed the grant of a motion to dismiss on subject-matter ineligibility grounds in Intellectual Ventures I LLC v. Erie Indem. Co., No. 2017-1147, 2017 U.S. App. LEXIS 22060 (Fed. Cir. Nov. 3, 2017). Intellectual Ventures is well-known in the patent industry as a patent assertion entity; its primary business model is to acquire patents and generate revenue from licensing and litigation surrounding those patents. The patents at issue in this case related generally to automatically identifying files that are not authorized to be on a computer system based on their size, file type, and naming convention. Accordingly, they appeared to relate to malware detection, though their language was broad and general enough to encompass detection of unauthorized files of any type, such as personal files on a business computer or unlawfully obtained copyrighted works.

When considering whether the claims were directed to an abstract idea, the Court took a high-level view of the claims’ general nature. It held that the claims were directed to identifying unwanted files on a computer network, which it stated was an abstract idea because the method only involved data collection and processing. The Court criticized the claims based on the specification’s explicit teaching that the same method could be performed manually by a human, which is a factor often raised when considering whether the claims are abstract. In fact, if the same patent were drafted today, it is likely that the patent drafter would not make such an admission in the disclosure. This case is illustrative of the problems patent owners face in asserting patents drafted before changes are made in the law, and what previously may have been viewed as innocuous language or even best practice may later prove fatal to the patent.

The Court distinguished McRO, a case where claims to automating 3D model speech animation were found patent-eligible, on the basis that the process in McRO utilized rules different from those that a human would use to particularly suit the animation process for computer automation. By contrast, there was no evidence that the processes in this case were any different from those that a human would use or that such differences would have resulted in an improvement in the computer’s functioning. While the Court conceded that there would be improvements in speed and error reduction, it concluded that those benefits flowed from the ordinary capabilities of a general-purpose computer, not from a change to the way a computer would operate.

Under step two of the analysis, which considers whether there is significantly more than the abstract idea in the claim, the Court found that the computer implementation was generic and did not impart patent-eligibility. It also stated that the novelty and nonobviousness of the identification rules was immaterial to the patent-eligibility of the claims. The Court’s analysis on that factor is at least in tension with the test’s explicit consideration of a claim as compared to a routine and conventional practice.

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