Developing Requirements For Patentable Subject Matter

September 15, 2016
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In talking to clients whose patent applications involve software, it simply is not good enough to ask for as much specificity as possible to help remove the invention from the realm of an abstract idea and avoid an unpatentable subject matter rejection. Rather, it now seems that the required specificity must also be grounded in a “technical means” for implementing the software components. Of course, what this “technical means” encompasses is not necessarily easy to define.

Smartphone under judge gavel over it – studio shot on white

A recent decision from the Federal Circuit in Electric Power Group, LLC v. Alstom S.A. does provide some helpful insight as to this “technical means.” Case No. 2015-1778 (Fed. Cir. Aug. 1, 2016).

The patents at issue involved systems and methods for performing real-time performance monitoring of an electric power grid by collecting data from multiple data sources, analyzing the data, and displaying results. Importantly, a majority of software developers will consider many of the recited steps as common building block of the trade, including:

  • receiving a plurality of data streams;

  • detecting and analyzing events in real-time;

  • displaying analysis results;

  • displaying concurrent visualization of measurements;

  • accumulating and updating the measurements from the date streams; and

  • deriving a composite indicator of reliability.

In reviewing these steps, the court first clarified which of them simply do not qualify as a “technical means.” Specifically, “the collection of information, including when limited to particular content, is considered abstract.” Id at 7. “The analysis of information by steps people go through in their minds, or by mathematical algorithm, without more, as essentially metal processes is considered abstract.” Id. “The mere presentation of results of abstract processes of collecting analyzing information, without more (such as identifying a particular tool for presentation), is considered abstract as an ancillary part of such collection and analysis.” Id.

In view of these abstract elements, the court noted that the claims simply define “a process of gathering and analyzing information of a specified content” while not including “any particular assuredly inventive technology for performing these functions.” Id at 8. The court further clarified this distinction by comparing “computer-functionality improvements” on the one hand and “uses of existing computer tools in aid of processes focused on abstract ideas” on the other. Id.

So, what are these “technical means” which may provide for “computer-functionality improvements” and so help remove a claim from the realm of an abstract idea? Of course, neither the court nor any attorney can provide a specific definition since this would most likely preclude a novel invention. However, the court does suggest certain “technical means” which, based on case law, might have saved the claims, including:

  • “The claims do not even require a new or type of information, or new technique for analyzing it.” Id at 9.

  • The claims “do not require an arguably inventive set of components or methods, such as measurement devices or techniques, that would generate new data. Id (emphasis added).

  • The claims “do not invoke any assertedly inventive programming.” Id(emphasis added).

  • The claims “do not require any nonconventional computer, network, or display components, or even a ‘non-conventional and non-generic arrangement of known, conventional pieces.'” Id at 10 (emphasis added).

  • The claims “do not require an arguably inventive device or technique for displaying information.” Id (emphasis added).

  • The claims do not “require an arguably inventive distribution of functionality within a network.” Id (emphasis added).

It would seem from these court-provided samples that a viable “technical means” needs to provide some inventive variation of the computer system on which the method is implemented. Specifically, something beyond implementing the method on an off-the-shelf computer or something beyond the functionality provided by a standard off-the-shelf operating system.