The Software IP Report

Data Back-Up Claims Held Patent-Ineligible under Alice

By Charles Bieneman

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

In a clear demonstration that patent-eligibility and novelty go hand-in-hand – despite some courts’ denial of this reality – a court has held that claims directed to “remote mirroring of digital data” are patent-ineligible under 35 U.S.C. § 101 and the Alice/Mayo abstract idea test.  Intellectual Ventures I, LLC v. Symantec Corp., No. 13-440-LPS (D. Del. Feb 13, 2017) (Judge Leonard Stark).  In granting summary judgment of invalidity, the court joined many other courts that have held claims patent-ineligible because they utilized only conventional technology.

Asserted independent claim 25 of U.S. Patent No. 5,537,533 recites:

A method for remote mirroring of digital data, said method comprising the steps of:

copying the data from a primary network server to a nonvolatile data buffer in a data transfer unit which is digitally connected to the primary network server, the primary network server including an operating system which is capable of accessing a nonvolatile server store, the data copied to the data transfer unit being a substantially concurrent copy of data which is being stored by the operating system in the nonvolatile server store of the primary network server;

copying the data from the data transfer unit to an input end of a communication link which has an output end physically separated from its input end;

generating and sending a spoof packet to the operating system of the primary network server; and

copying the data from the output end of the communication link to a nonvolatile server store on a remote network server.

This claim (and asserted claim 33, depending therefrom) was, considered “as a whole,” directed to the “abstract idea of backing up data.”  Intellectual Ventures, the patent owner, attempted to overcome the abstract idea by noting that the patent specification highlighted improvements to the prior art.  The court was not persuaded, noting that the claims provided no “concrete details that limit the claimed invention to a specific solution to the problem of remote back-up of digital data.”  The claims used functional language, and used “existing computer functionality.”

Thus, examining “the claim limitations, individually, and as an ordered combination, for an ‘inventive concept,’” the court found nothing “sufficient to transform the abstract idea into patent-eligible subject matter.”  Even to the extent that the claims provided a “specific ordering of events,” Symantec, the defendant, had shown “that this order was known and conventional.”


As a plethora of cases demonstrates, no matter how separate the patent-eligibility is from the question of prior art in practice, the reality is that the analyses go hand-in-hand.  So when drafting patent applications think hard about whether you can state a technical solution to a technical problem.  And if you can state a technical problem and solution, do it, as clearly as you can.