Breathing new life into the § 101 analysis post-Alice , the Court of Appeals for the Federal Circuit (“CAFC”) found claims directed to a user interface to be patent eligible in Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., LG Electronics Mobilecomm U.S.A., Inc., Case No 2016-2684, 2017-1922 (Decided January 25, 2018).
In Core Wireless, the Applicant’s claims were directed to an improved interface for a mobile electronic device which allowed a user to quickly “drill down” into specific applications and data by presenting a summary window with a limited list of common functions and commonly accessed data for immediate access from the main menu. The CAFC found this invention to solve the common problem of how to most efficiently provide access to frequently used applications, as well as navigate otherwise complex menus and voluminous data indexes. The CAFC noted that this problem was particularly apparent in the context of mobile devices, which typically have a single small screen that limit the amount of information which may be presented to a user.
The CAFC noted that while the generic concept of summarizing information was certainly known prior to the invention, the particular manner of summarizing and presenting information in the context of electronic devices was not. In particular, the manner by which the summary window was accessed and the ability to launch particular applications and/or enable the selected data to be viewed represented an improvement over the conventional approaches.
As part of its analysis, the CAFC first reviewed and reiterated a number of post-Alice cases where subject matter eligibility was found based on an explanation of how the invention solved a specific problem and improved the art in some way not previously considered. E.g., Enfish (improvement to a computer’s functionality via a self-referential table), Thales (particular configuration of inertial sensors and method of using raw data), Visual Memory (improved computer memory that provided flexibility and obliviated the need for separate memory for each process), and Finjan (a new kind of computer file which enabled computer security systems to accomplish new behavior-based security functions).
Beyond the implications Core Wireless brings to similar technology, the CAFC’s basis for its finding also serves as a reminder of the value of telling a story in one’s patent application. This story should be built upon a theme of how the invention solves an existing problem in the art. While this strategy may, at first blush, appear like common sense, it can be easy to lose sight of the forest when you are among the trees. While the technical features, distinguishing structural aspect, etc. of the invention should be explored in great detail, it remains vital to continually reiterate how these new technical features, structural elements, etc. provide an advantage and solve the underlying problem which prompted the invention’s creation in the first place. Stated simply, one should often return to an explanation of how and why each feature of the invention provides an advantage and contributes to the field of endeavor.
This strategy is particularly important in the post-Alice world. Pre-Alice, one’s patent application stood a better chance of only facing the scrutiny of a patent examiner. The patent Examiner, armed with a relevant technical background, being presumably more likely to appreciate the technical nuisances of the invention and inherently understand the benefit it brings to the art. However, in the post-Alice world, it is increasingly more likely that an asserted patent will also face the scrutiny of generally non-technical judges and jurors. While the technical nuisances and inherent advantages of the invention may be presented to the judge or jury by way of a skilled expert witness, there is no substitute for the ability to draw upon the Applicant’s own statements in his/her patent application that demonstrate the inventions meaningful contribution to the art.
Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014). For those just joining the conversation, Alice was a benchmark decision often relied upon to criticize certain software and business method patents and applications.
If you have any questions about patent eligible subject matter, contact a patent attorney to seek advice.