Seeing a Forest, Not Just Trees: Core Wireless v. LG

By Gregory Hopewell

Do you remember obviousness before KSR v. Teleflex? To invalidate, the rule went, one must find an express rationale for combining references (a teaching, suggestion or motivation). The KSR ruling reminded us that the TSM test was too rigid—the proper analysis should more flexibly evaluate obviousness with the skilled artisan in mind, without rigid requirements for these rationales in the references themselves.

If we knew how to more flexibly identify rationales for obviousness post-KSR, it was not clear how to more flexibly apply patent eligibility without the machine or transformation test after Bilski and Alice. A machine, apparently, was now just a clue. But identifying how to apply the more general principles from Alice and Bilski was not as easy to apply as a flexible obviousness test. The recent Core Wireless decision may show us a more useful theme for applying a more general approach to obviousness.

Eligible Decisions Have Focused on Specific Facts

Learning the new contours of the broad, general terms of the Court’s instructions in Bilski and Alice has felt like blundering through a forest, carefully inspecting the facts of individual patents at issue in various decisions and learning they are “abstract” with “no inventive concept” without easily apparent themes. Drawing the more general contours of the growing Federal Circuit case law has been challenging and compounded by selection bias of those claims actually appealed to the Federal Circuit—trolls and other enforcers may be more likely to litigate and appeal broad and results-oriented claims that appear to have many infringers (and are now ripe for challenge as ineligible). Each eligible case has often lived on its own facts, while in ineligible cases, courts (and patent examiners) may run through and reject the litany of individual reasons that eligible cases were permissible. For ineligible claims, there appeared to be the same general reasons that could broadly be applied to invalidate (e.g., an abstract idea executed on a general purpose computer). 

Unifying Principles Among Eligible Cases

General principles for finding claims eligible have been elusive. A few weeks ago, the Core Wireless decision (Fed. Cir., Jan. 25, 2018, by J. Moore, affirming eligibility) suggests a broader theme that may help tie these eligible cases together.

In summarizing prior eligible decisions, the court returned, again and again, to how prior eligible decisions addressed claims with features that were “particular” and “unconventional.” This table summarizes treatment of the previous cases cited in Core Wireless:

Prior Decision	Description in Core Wireless (internal citations and edits omitted)
Enfish [eligible, self-referential table]	“The claims were directed to a particular improvement in the computer’s functionality.” “The claimed self-referential table was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory.”
Thales [eligible, determining position of object using inertial sensors]	“The claims specified a particular configuration of the sensors and a particular method of utilizing the raw data that eliminated many of the complications inherent in conventional methods”
Visual Memory [eligible, programmable operational characteristics defined by the processor]	“The claimed invention provided flexibility that prior art processors did not possess, and obviated the need to design a separate memory system for each type of processor.”
Finjan [eligible, behavior-based application scan and security profile]	“They [the claims] employ a new kind of file that enables a computer security system to do things it could not do before, including accumulating and utilizing newly available, behavior-based information about potential threats.” “The claimed behavior-based scans, in contrast to prior art systems…”

Here is one representative claim from the ‘476 patent at issue in Core Wireless: 

1. A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an un-launched state.

In looking at this claim, the court noted ways in which a particular approach was being used to create an improvement and variously described limitations as follows: “a particular manner of summarizing and presenting information” “specifying a particular manner by which the summary window must be accessed,” “this claim limitation restrains the type of data that can be displayed,” and “a requirement that the device applications exist in a particular state.” Together, the court found the claim recited “a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer.” Like the cases above, “these claims recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.”

In this case, the court then looked to the specification to confirm that these particulars are interesting. The court notes that the specification describes problems with the prior art displays, especially for smaller screens, and that prior interfaces may require significant “drill down” through layers of interface to reach information within applications.    

Tying it All Together

This focus on the “particular approach” and its “unconventional” nature with respect to the prior art appears to me to thread the needle for many post-Alice 101 decisions. Though the evaluation for the apparently-distinct tests of “directed to an abstract idea” and “something more” has been challenging to untangle, this approach of identifying the “specific” effects of a particular approach and then evaluating if and how it is “unconventional” appears to provide a theoretical touchstone applicable to many cases.

In this framework, the first question appears to be whether the claims actually do provide a particular solution to a problem. That particular solution can be confirmed as eligible when it provides something unconventional—something beyond a “field of use” or “conventional” execution of a concept. I’ll be taking a deeper look at the broader applicability of this approach to prior decisions in a later post.[1]

 

[1] One reason the “directed to an ineligible concept” portion of the Bilski/Alice test is troublesome is that it facially appears to suggest that additional limitations or concepts in the claim beyond the abstract idea ought to, alone, render a claim eligible. If I take my abstract idea and practice it with a computer in Siberia, locating the computer in Siberia should, by definition, prevent the claim from being directed to some abstraction and avoid preemption, right?  In practice, however, any additional limitation (or even any number of arbitrary limitations) has not been enough. Confusingly, while we are cautioned to look at the “claim as a whole” for determining whether the claim is directed to an abstract idea, it becomes unclear when additional limitations are to be evaluated as part of the “directed to” inquiry or when they are addressed in the “something more” analysis. E.g., Electric Power Group recited a long claim, but the fact that it received and processed power system data and recited various power-related measurements was a “field of use.”