HELIOS SOFTWARE LLC v. 
SPECTORSOFT CORPORATION

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Summary

Claims of US patent, US 6,978,304 US 7,634,571 and US 7,958,237, in the name of Helios Software were found to be patent eligible subject matter under 35 USC 101 because allegations that features where principles fundamental to the ubiquitous use of the internet were not supported, and the claims included meaningful limitations, which could not be performed by a human alone.

Broad description of the invention

The'304 and '571 Patents relate to remotely monitoring data associated with an Internet session, and the '237 Patent relates to controlling computer network access.

Characteristic Claim

Claim 1 of US ‘304 is:

A method of remotely monitoring an exchange of data between a local computer and a remote computer during an Internet session over the Internet, the method comprising the steps of:

Details

The defendant,  SpectorSoft argues that the patents US 6,978,304 and US 7,634,571 by Helios Software are patent-ineligible because they are directed to an abstract idea. Plaintiffs, including Helios Software, counter that the patents are directed to patent-eligible processes that satisfy the machine or transformation test.

SpectorSoft argues that the inventions are "basic concepts" that were "well-understood and routine" and that performing these "well-understood, routine and generic computer functions . . . fails to circumvent the prohibition against patenting abstract ideas." (D.I. 376 at 23) The Court disagrees.

Under 35 U.S.C. § 101, "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." There are three exceptions to § 101's broad patent-eligibility principles: "laws of nature, physical phenomena, and abstract ideas." Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). Pertinent here is the third category. "The `abstract ideas' category embodies the longstanding rule that an idea of itself is not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014). "As early as Le Roy v. Tatham, 55 U.S. 156, 175 (1852), the Supreme Court explained that `[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.' Since then, the unpatentable nature of abstract ideas has repeatedly been confirmed." In re Comiskey, 554 F.3d 967, 977-78 (Fed. Cir. 2009).

In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), the Supreme Court set out a two-step "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. First, courts must determine if the claims at issue are directed at a patent-ineligible concept. See id. If so, the next step is to look for an "'inventive concept' — i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself" Id.

"Simply appending conventional steps, specified at a high level of generality, [is] not enough to supply an inventive concept." Id. at 2357 (internal quotation marks omitted) (emphasis in original). In Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010), for example, the Supreme Court held that the claims involved were drawn to the patent-ineligible abstract idea of "hedging, or protecting against risk," which was a "fundamental economic practice." Similarly, in Alice, the Supreme Court found that the claims were drawn to the patent-ineligible abstract idea of "intermediated settlement," which was also a "fundamental economic practice." 134 S. Ct. at 2356. In both cases, the Supreme Court found that the additional steps delineated in the claims did not embody an "inventive concept" sufficient to ensure that the patents amounted to something more than a legalized monopoly on the practice of the ineligible fundamental concepts themselves.

In determining if a patent embodies such an inventive concept, courts may consider whether the process "is tied to a particular machine or apparatus" or "transforms a particular article into a different state or thing." Bilski, 130 S. Ct. at 3227 ("[T]he machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101."). "[T]o impart patent-eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine must impose meaningful limits on the claim's scope." CyberSource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1375 (internal quotation marks omitted). To be "a meaningful limit on the scope of a claim," the addition of a machine "must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly." SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Hence, the "mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358. "Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of additional feature that provides any practical assurance that the process is more than a drafting effort designed to monopolize the abstract idea itself." Id.

Although the "machine-or transformation test is a useful and important clue" to determining patentability, it is "not the sole test for deciding whether an invention is a patenteligible 'process.'" Bilski, 130 S. Ct. at 3227. "[I]n applying the § 101 exception, [courts] must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more thereby transforming them into a patenteligible invention." Alice, 134 S. Ct. at 2354 (internal citations omitted). The "concern that drives the exclusionary principle [i]s one of pre-emption." Id. That is, where a "patent would pre-empt use of basic tools of scientific and technological work, i.e., laws of nature, natural phenomena, and abstract ideas, the patent would "impede innovation more than it would tend to promote it, thereby thwarting the primary object of the patent laws." Id.

Here, the patents-in-suit are drawn to remotely monitoring data associated with an Internet session and controlling network access. SpectorSoft makes no effort to show that these ideas are fundamental truths or fundamental principles the patenting of which would pre-empt the use of basic tools of scientific and technological work. Although "remotely monitoring data associated with an Internet session" or "controlling network access" may be principles fundamental to the ubiquitous use of the Internet or computers generally, SpectorSoft has provided no support for that position. As such, the Court cannot agree with SpectorSoft that the patents-in-suit are drawn to an abstract idea.

Additionally, even if the asserted claims were drawn to abstract ideas, the claims would remain patentable because they satisfy the machine-or-transformation test. The implementation of the '304 Patent by a computer inserts meaningful limitations by claiming exchanging data over different internet sessions to capture the content of an ongoing Internet communication session. (`304 Patent 1:28-34) Similarly, the '571 Patent claims real-time data capture and transmission and reception, thereby using a computer to "play a significant part in permitting the claimed method to be performed." Finally, the '237 Patent involves the ability to provide access configurations and communication protocols that control computer network access and monitor activity. (`237 Patent 1:54-2:3) These meaningful limitations limit the scope of the patented invention and sufficiently tie the claimed method to a machine. Importantly, both sides concede that none of these limitations could be performed by a human alone. (D.I. 376 at 23; D.I. 342 at 20) Accordingly, the Court finds that the patents-in-suit are not drawn to patent-ineligible subject matter. Plaintiffs' motion for summary judgment regarding SpectorSoft's affirmative defense of lack of patentable subject matter is granted.