Federal Circuit Provides Opening for Patent Eligibility of Software and Computer-Based Inventions

September 16, 2016
Post by Nicholas J. Krob

The United State Court of Appeals for the Federal Circuit has provided clarity this week regarding the patent eligibility of computerized processes.

On Tuesday, the appellate court issued its ruling in McRO, Inc. v. Bandai Namco Games America Inc. et. al., wherein it reversed the lower court's ruling that patents on lip-sync technology were invalid for claiming an abstract idea.

Under 35 U.S.C. § 101, "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,"qualifies as patent-eligible subject matter. However, courts have created exceptions to this eligibility. Relevant in this case was the United States Supreme Court's ruling in Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) that abstract ideas are not patentable.

Under Alice, mere computer automation of abstract processes was deemed insufficient to render claims patent-eligible. The defendants inMcRO claimed that this invalidated the plaintiff's patents, as the claims "simply use[d] a tool to automate conventional activity.‚¬

The patents at issue in this case were for methods of automatically animating lip synchronization and facial expressions of animated characters-something generally accomplished manually by an animator using a computer. Contrary to the defendants' contentions, the Federal Circuit held that this automated process was itself a new approach that had improvements beyond mere computer automation. As the court noted, "[i]t is the incorporation of the claimed rule, not the use of the computer, that improved the existing technological process by allowing the automation of further tasks."This differs fromAlice and other similar precedent where the computer-automated process was carried out in the same way as the prior method.

The court's analysis makes it clear that there is a divide between the mere computer automation of an abstract process and a new process entirely. To assess this distinction, courts must compare the pre-existing process with the process claimed in a patent. A mere computer-implementation of a preexisting process or concept will remain invalid underAlice. Conversely, claimed differences in the process such that it creates an otherwise non-existent process may overcome the restrictions laid out inAlice.

Importantly, the ruling in this case has an impact on other software inventions by providing for possible patent eligibility to inventions that specifically claim unconventional steps that differ from the way the task is performed without a computer.

The full opinion can be found here.

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