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By Tony Dutra
Jan. 5 — Motio Inc.'s software-only claims are eligible for patenting because they add “meaningful limitations” to the abstract idea of tracking older versions of application code and data, the U.S. District Court for the Eastern District of Texas said in a ruling.
Judge Amos L. Mazzant rejected Jan. 4 alleged infringer Avnet BSP Software's request for summary judgment of patent invalidity, allowing the infringement case to continue.
Software applications have had a tough time beating patent ineligibility challenges under 35 U.S.C. §101, as federal courts apply a two-step test set by the Supreme Court in 2014 in Alice v. CLS Bank. The U.S. Court of Appeals for the Federal Circuit has allowed only an Internet-related application to pass the test, in DDR Holdings v. Hotels.com.
In this case, the court found that DDR Holdings is not confined to network applications, and that Motio's invention similarly “does not simply use a computer to automate [what] was done previously, but rather improves upon what was previously done with computers, solving a computer specific problem.”
Motio's U.S. Patent No. 8,285,678 is directed to version control of business intelligence software. Computer document “version control” allows software application developers and users to maintain a historical record of changes to the application or its stored data.
Business intelligence generally encompasses any system that uses insight on raw stored data to generate useful reports about a business task—e.g., manufacturing or sales.
The court agreed with Avnet that version control is an abstract idea. Inventors can't patent abstract ideas, under the first step of Alice Corp. Pty Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2014 BL 170103, 110 U.S.P.Q.2d 1976 (2014) (119 DER A-9, 6/20/14).
But the second step allows the inventor to overcome that problem if “the claims contain meaningful limitations that create an ‘inventive concept,'” the court said. The court found first a specific limitation in that Motio's solution was an improvement in business intelligence systems.
More specifically, each of the 10 method claims of the ‘678 patent requires “an automated agent,” described in the patent as something that “continuously monitors changes to, and the health and consistency of, a business intelligence software installation.”
The court said, “It is the provision of this automated agent to solve the problem of a business intelligence system lacking native version control that amounts to significantly more than a patent on the idea of maintaining versions of electronic documents itself.”
Preparations for trial continued the day after the opinion was published.
Jeffrey M. Drake of Miller Canfield Paddock & Stone PLC, Chicago, represents Motio. Matthew B. Lowrie of Foley & Lardner LLP, Boston, represents Avnet.
Avnet also failed in a challenge to the '678 patent in a inter partes review proceeding before the Patent Trial and Appeal Board. The board denied Avnet's IPR petition saying it was unlikely to prevail on charges of patent invalidity for anticipation or obviousness.
The Federal Circuit's DDR Holdings opinion is at 773 F.3d 1245, 2014 BL 342453 (Fed. Cir. 2014) (235 DER A-27, 12/8/14).
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