The Software IP Report

One-Court Alice Backlash: Delaware’s Judge Robinson, Critical of Recent Trends, Upholds Software Patents in Three Cases

Judge Sue Robinson—the longest-serving judge in the District of Delaware, among the most popular patent venues in the nation—bucked the trend in patent-eligibility law. Recently, she issued three opinions in three cases addressing software-related patents under 35 U.S.C. § 101. Improved Search LLC v. AOL, Inc., Civ. No. 15-262-SLR (D. Del. Mar. 22, 2016); Intellectual Ventures I LLC v. Ricoh Americas Corp., Civ. No. 13-474-SLR (D. Del. Mar. 22, 2016); Network Congestion Solutions, LLC v. U.S. Cellular Corp., Civ. No. 14-903-SLR (D. Del. Mar. 22, 2016).

The trend? In applying § 101 since Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014), courts have given software patents a rough go of it. District courts frequently cite Alice to strike down software patents. And as Judge Robinson notes, the Federal Circuit, for its part, has not upheld a computer-implemented patent under § 101 since DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014), the sole post-Alice victory for a software patent owner, issued a few months after Alice came down. See Improved Search at 8 & n. 4 (citing eight Fed. Cir. decisions striking down computer-implemented patents).

Judge Robinson criticizes this shift in § 101 law in an extended discussion common to the three opinions. See id. at 3–13. She “is struck by the evolution of the § 101 jurisprudence” from “complete rejection” in the 1960s to “complete acceptance” in the 1990s to Alice’s skepticism in the 2010s. Id. at 10–11. This evolution means that the patents invalidated under Alice today would likely have been considered valid if challenged when they issued. See id. at 11. The current Federal Circuit law spans a breadth of possible interpretation, from allowing many software patents to “the death-knell for patent protection of computer-implemented inventions.” Id. at 12.

Amidst this sea of uncertain law, Judge Robinson clings to DDR as an island of sensible thought or, in judicial parlance, a “benchmark.” Id. The DDR rule provides the proper means to judge software patents under Alice. “[T]he first step of Alice is, for the most part, a given” because of software’s inherent abstractness. Id. at 5–6. For the second Alice step, Judge Robinson restated DDR:

the claims (informed by the specification) must describe a problem and solution rooted in computer technology, and the solution must be (1) specific enough to preclude the risk of pre-emption, and (2) innovative enough to “override the routine and conventional” use of the computer.

Id. at 12 (citing DDR, 773 F.3d at 1258–59).

Perhaps unsurprisingly, Judge Robinson upheld the challenged patents in all three cases. Here is a representative claim from Improved Search:

A method for performing a contextual search and retrieval of documents in a computer network, comprising:

receiving through an input device, a query in a first language;

processing said query to extract at least one content word from the query;

performing dialectal standardization of the at least one content word extracted from the query;

translating the at least one dialectally standardized content word into a second language through a translator;

performing a contextual search in the second language based on the at least one translated content word, using a search engine in the second language; and

obtaining the search results in the second language in the form of at least one of site names (URLs) and documents, satisfying a search criteria.

U.S. Pat. No. 6,604,101 at claim 1. The court found that the claims were not merely drawn to the abstract ideas of translingual searching and advertising but instead “recite sufficiently specific steps” to avoid monopolizing the abstract ideas. Improved Search at 18–19.

An argument based on a human analogue failed as well in Network Congestion. Here is a representative claim:

A method for alleviating congestion in a communication network, the communication network enabling the flow of data to and from a plurality of end user devices that are connected to the network through a plurality of communication devices, the method comprising the steps of:

monitoring data flows to and from the plurality of end user devices for indications of congestion; and

controlling the data rate of at least one end user device in response to said congestion indications.

U.S. Pat. No. 6,826,620 at claim 1. The court found that the claims are not merely equivalent to “resource management performed by a human such as a TSA worker at an airport checkpoint or a factory line supervisor of widgets down a production assembly line” (Network Congestion at 15); rather, the claims are “necessarily rooted in computer technology” and provide “the requisite degree of specificity.” Id. at 16 (citing DDR).

While the defendant in Intellectual Ventures analogized the claims to abstract mathematical formulas instead of abstract human behavior, the result was the same. Here is a representative claim:

An image scanning method for a scanner, the method comprising the steps of:

determining a driving signal, a triggering signal, and a number of rotation steps according to a predetermined resolution, wherein a period TG of the triggering signal equals a period TM of the driving signal multiplied by the number of rotation steps N within the period TG;

driving a motor by the driving signal;

outputting an image signal by the triggering signal; and

storing the image signal within the period of the triggering signal.

U.S. Pat. No. 6,130,761 at claim 1. The court found that the claims did not merely claim or implement a mathematical formula and “are of sufficient specificity and describe ‘how’ the particular method operates the scanner,” avoiding preemption. Intellectual Ventures at 14–15.

Each of the above claims certainly lend themselves to the thought that other judges might have decided against, rather in favor of, patent-eligibility.  The effect of Judge Robinson’s volley on the larger debate remains to be seen.