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By Tony Dutra
March 11 — The U.S. District Court for the Northern District of California issued another opinion March 10 finding software patent ineligibility, with a few lessons added (Hewlett Packard Co. v. ServiceNow, Inc., N.D. Cal., No. 5:14-cv-00570-BLF, 3/10/15).
First, the result makes clear that so-called patent trolls are not the only holders of patents found to be directed to ineligible abstract ideas—Hewlett Packard Co. was the victim here.
Second, this district court—and probably most others—in its desire to address the Section 101 challenge early in a case, is not going to allow the patent holder to avoid stating its claim construction preferences.
Courts have dismissed several cases on the pleadings or, as here, with summary judgment, taking the patentee's desired constructions as a basis for its 35 U.S.C. §101 analysis.
Third, the requirement to state claim construction arguments before discovery presents a special problem with computer-implemented inventions.
HP's patent specifications contain detail on implementing the automated information technology help desks at issue in this case, but the patent claims were written with broader functional limitations.
Should HP argue for a broad construction, hoping to capture whatever variations it might later discover exist in ServiceNow Inc.'s implementation?
Or should it ask for constructions informed by the detail provided in the specification, to minimize the chance that its claims will be found to preempt all implementations of an IT help desk?
HP chose the broad construction route and paid for that choice. “The '802 and '512 patents' specification may contain somewhere a specific, patentable implementation of automating the resolution of IT incidents,” Judge Beth Labson Freeman said, in one example. “But for purposes of §101, the claims themselves are what matter, and what is claimed is far too broad to constitute a specific implementation of automated resolution of IT incidents.”
Relatedly, if the claim includes a data structure—most likely, algorithms would fall within this category as well—it won't help to give the structure or its data fields “idiosyncratic names” unless the preferred construction remains equally idiosyncratic.
HP had identified concepts such as “derived containers” and “repair workflows,” but its proposed construction of those terms, according to Freeman, “does not go beyond the kind of ‘functional and generic' description” of generic computer components that do not impart patent eligibility.
Finally, the court said, the U.S. Supreme Court's admonition that simply “using a computer” to implement an abstract idea applies equally to claims with similar key phrases—here, “instructions for” and “configured to.”
The court held that representative method and “computer program product” claims of each of the four patents at issue in this case were directed to an abstract idea, under step one of the Alice v. CLS Bank framework, and that each limitation of each claim showed no “inventive concept” in step two, other than computer implementation of either the overarching abstract idea or of the abstract idea of that limitation “in itself.”
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