Watch Out for Claim Preambles in Light of Federal Circuit Decision
On November 1, 2017, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s grant of a motion for judgment on the pleadings on subject-matter ineligibility grounds in Two-Way Media v. Comcast Cable Communs., No. 2016-2532, 2017 U.S. App. LEXIS 21706 (Fed. Cir. Nov. 1, 2017). The asserted patents related generally to methods of transmitting packets of information over the Internet that bundled packets destined for several recipients, forwarding them to a point in the network where they are replicated, and then sending the replicated packets to the individual recipients.
The Court criticized the claims for using result-oriented, functional language that did not sufficiently describe how the results were achieved. It found that the claims were directed to monitoring the delivery of real-time information to users or measuring such delivery for commercial purposes. As a result, the Court concluded that the claims were directed to an abstract idea because they only required generic computer components to accomplish the data manipulation required by the claimed methods. In addition, it held that the functionality of the computer hardware was not improved by executing the claimed methods.
The Court acknowledged that the specification described a system architecture that may have qualified as a technological innovation, but concluded that the architecture was not required by the claims. It discounted the technological nature of the problems solved, emphasizing that the way in which the problems were solved was claimed in a way that only required conventional computer and network components operating in their ordinary capacities. This decision reveals how important it can be to tie the technological nature of a problem solved and the solution adopted to the language employed in a patent claim to ensure that the problem and solution support that claim’s patent-eligibility.
In addition, the Court rejected Two-Way Media’s argument that it was improper to rely heavily on the claim’s preamble when analyzing whether the claim is directed to an abstract idea. The risk is that focusing on the preamble could result in a decision-maker ignoring the detailed, technical content of the claim. As a result, patent applicants may want to carefully draft their claim preambles to ensure that, if the claim is reduced to the preamble, a technological innovation can still be found. On the other hand, patent challengers may persuasively argue that a claim is abstract based on broad, functional statements made in the claim’s preamble.
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Author: James Watson