Strengthen Software Claims Against Alice’s Challenges Through Coined Terms and Describing Technical Benefits in Numbers – Intellectual Property


The Federal Circuit recently provided policy guidance for the defense of software claims against Alice’s challenges that assert ineligible patent subject matter under 35 USC § 101. In Mentone Solutions LLC v. Digi International Inc., the Federal Circuit reversed the dismissal of the district court based on the court’s decision that the representative patent claim was directed only to an ineligible abstract idea with no inventive concept. Here, the defendant had argued that claim 5 of U.S. Patent No. 6,952,413 was directed to allocating data channels using staggered uplink status indicators in cellular mobile stations, and was not therefore not eligible. On appeal, the Federal Circuit overruled, finding that the claim was not directed to an abstract idea, as it was intended to improve the functionality of a computer.

Guidance based on CAFC decision

The Mentone decision, while unprecedented, provides additional insight into how to overcome Section 101 challenges, such as the use of inventor-invented terms in claim language, describing technical shortcomings of the prior art and the technical advantages of the invention in the figures, and recite specific claim language that captures the technical advantages of the specific technical problem. Once the specification of the patent application has been drafted and submitted, well before litigation begins, these strategies can no longer be implemented. Practitioners should therefore be mindful when writing the specification to address those areas that may enhance Alice’s natural immunity, thereby enhancing the value of the patent’s assets.

The patent-eligible claim of U.S. Patent No. 6,952,413

The claim at issue provided for a series of method steps related to resource allocation on packet data channels:

5. Multiple access communication method in a mobile station, comprising the steps of:

receiving an assignment of at least a first PDCH (packet data channel) and a second PDCH;

monitor an assigned PDCH to detect a[n uplink
status flag (“USF”)] USF; and

transmit on an assigned PDCH corresponding to the USF,

wherein (i) if the shifted USF operation is not used, then a first assigned PDCH is monitored to detect a USF corresponding to the first assigned PDCH and (ii) if the shifted USF operation is used, then a second PDCH assigned is monitored to detect the USF corresponding to the first assigned PDCH and a USF corresponding to the second assigned PDCH.

The claim covers a method of communication in cellular mobile stations. According to the method, mobile stations may allocate a packet data channel (PDCH) to be used for downlink and uplink operations. Downlink operations include receiving information from the network and uplink operations include transmitting information to the network.

Uplink status indicators can indicate whether a packet data channel is affected to transition from receiving information from a network (for example, downlink operations) to transferring information to a network ( for example, uplink operations). But sometimes the assignment of the PDCH to switching cannot be done due to the fixed timing relationship and the turnaround time required between downlink signaling and subsequent uplink operation. This inability to assign a PDCH for uplink operations reduces the availability of uplink operations, thereby reducing data throughput and flexibility to respond to changing conditions.

The claim thus uses staggered uplink status flags (“staggered USFs”) to control access to the PDCHs, allowing the mobile station to transition to uplink operations more efficiently.

Claim 5 is not directed to an abstract idea – Court’s Reasoning and Analysis

The Federal Circuit rejected the view that the claim was merely the abstract idea of ​​”receiving an uplink status indicator and transmitting data during the appropriate time intervals”. Instead, the Federal Circuit found that the patent improved computers by claiming USFs that broke the fixed time relationship between receipt of the USF during a downlink operation and subsequent uplink operations. These improvements solved the data network problem explained by the patent with respect to USFs.

The Court relied on several features of the language and specification of the claim to establish claim 5 as an eligible patent under Section 101. First, the claim stated “offset USF”, which was a term coined by the inventor. Second, the claim set forth specific capabilities in response to detecting an offset USF operation, such as monitoring a second assigned PDCH to “detect the USF matching the first assigned PDCH and a USF matching the second assigned PDCH” and transmission on both PDCHs accordingly. Third, claim 5 reflected the technical improvement over existing systems, i.e. breaking the fixed relationship in the timing of downlink assignment signaling. Finally, the specification showed an example of the shortcoming of the prior art (such as the unauthorized configuration of Figure 3) and offered a solution: a new configuration using an offset USF that allows the mobile station a sufficient rotation to switch from downlink operations to uplink operations.

As regards the description of technical problems and technical advantages in the specification, the patent further presented figures illustrating the limitations of the prior art and the corresponding technical solutions. For example, Figures 2 and 3 detail the limitations of a USF due to the slot allocation constraints related to the fixed time relationship. Additionally, Figures 4 and 5 capture the technical solution by showing the mobile stations monitoring the 2nd downlink slot for the shifted USF instead of the 1st downlink slot for the first USF, and Figure 7 shows how the elements of claim 5 operate.

Take away food

The decision provides guidance regarding techniques that patent practitioners can use to rebut arguments that unfairly reduce software claims to a mere abstract idea inadmissible at the first stage under Section 101.

Patent writers can benefit from illustrated substantiation (if possible) using diagrams of claimed advantages over prior art. Additionally, patent writers may include discussions of: (1) invented terms used in claims that address problems identified in the specification, (2) how the invention improves upon the prior art, and (3) Figures that describe the specific steps to realize the technical benefits. Litigants can then point to these figures describing the technical problems and technical solutions to overcome Alice and support a conclusion of patent-eligible claims.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.


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