The Software IP Report

Automated Migration of Computer Settings Not Patent-Eligible, Says Federal Circuit

By Charles Bieneman

Categories: Patent Eligibility, Software Patents, The Software IP Report

In a non-precedential decision that appears to have been fairly easily reached, a Federal Circuit panel affirmed a district court’s summary judgment of invalidity under 35 U.S.C. § 101 for patent claims directed to migrating computer configuration settings.  Tranxition, Inc. v. Lenovo (United States) Inc., Nos. 20151907, 20151941, 20151958 (Fed. Cir. Nov. 16, 2016) (opinion by Chief Judge Prost, joined by Judges Reyna and Chen).

Claims of U.S. Patent Nos. 6,728,877 and 7,346,766 recite methods for “automatically transitioning,” from one computer to another, an individual user’s computer settings, “such as email addresses, desktop settings, and stored passwords.”  The court considered claim 1 of the ’877 patent (available here), which recites “[a] method in a computer system for preparing configuration settings for transfer from a source computing system to a target computing system.”  The court easily concluded that this claim was “directed to the abstract idea of migration, or transitioning, of settings.”

Then, turning to the second part of the Alice patent-eligibility test, the court explained that

Tranxition argues that the claims contain an inventive concept because a manual process would not necessarily capture all the configuration settings in a computer and that there is no record evidence showing that the automated transition process operates in the same way as a manual process. These arguments miss the mark. Though a computer could potentially have dozens, if not hundreds of settings across numerous applications, the claim language only requires one or more configuration settings. It does not provide a maximum number of settings. Further, it is not relevant that a human may perform a task differently from a computer. It is necessarily true that a human might apply an abstract idea in a different manner from a computer. What matters is the application.  “Stating an abstract idea while adding the words ‘apply it with a computer’” will not render an abstract idea non-abstract.  [Citing Alice.] There must be more.

In this case, there was not more:

Here, the claim instructs a practitioner to (1) provide configuration information, (2) generate an extraction plan, (3) extract the configuration settings, (4) generate a transition plan, and (5) transition those settings to a new computer. These steps, both individually, and as an ordered combination, do not disclose an inventive concept. They merely describe a generic computer implementation, using “routine, conventional activities,” of the abstract idea, “which is insufficient to transform the patent-ineligible abstract idea into patent-eligible subject matter.”