Written by: Robert A. Esposito, Ph.D.
The eligibility of software patents under 35 U.S.C. §101 has been an ongoing legal issue dating back to the early days of computers in the late 1960s.
Prior to 2014, Patent Examiners rarely issued §101 rejections during prosecution of software-based patent applications. Furthermore, any such rejection was easily overcome by simply claiming generic computer components (e.g. processor, memory, etc.). Everything changed after the Supreme Court’s decision in Alice Corp. v. CLS Bank. Following the Alice decision, examiners began issuing §101 rejections (herein Alice rejections) for any patent applications that even partially relied on software. What’s more concerning is the difficulty experienced by patent practitioners in attempting to overcome such rejections. Four years after the Alice decision, patent practitioners and examiners alike are still having difficulty navigating these types of rejections.
The future for software-based patent applications, however, is getting brighter, as the patent office has periodically updated and improved Examiner/Practitioner guidance for resolving Alice rejections. This guidance has proven to be critical in overcoming, and even avoiding, Alice rejections in software-based patent applications. This is particularly good news for the automotive industry, as cars are increasingly becoming computers on wheels, generating and receiving massive amounts of data. Predictability of patent protection for the software aspects of the autonomous car should be every bit as certain and reliable as it is for other areas of technological innovation. Below is a summary of where things stand on the road back to this predictability.
101 states that a claimed invention must fall into one of four statutory categories (e.g. processes, machines, manufactures and compositions of matter) and must not be directed to a judicial exception (abstract ideas, laws of nature and natural phenomena) unless the claim as a whole includes additional limitations amounting to significantly more than the exception.
The issue in Alice was whether claims directed to computer-implemented algorithm for facilitating financial transactions fell under one of the judicial exceptions, and if so, whether the claims included additional limitations amounting to “significantly more.” Alice’s claims were held to be invalid because they were drawn to an algorithm that was an abstract idea (i.e. financial transaction), and implementing the claimed steps on a generic computer (i.e. personal computer) was not considered to be “significantly more” than the abstract idea itself. The scope of what is considered to be “significantly more” is still unclear, but is being refined with each new court decision.
Automotive Technology Under the Alice Cloud
Alice continues to cause headaches for various industries, including the automotive industry which in recent years has developed vehicles that are heavily reliant on software based technology. Some of these technologies include but are not limited to Vehicle-to-X Communication systems, Navigation/Display systems, and Autonomous systems (e.g. autonomous cruise control, braking, steering, etc.).
Alice is being used as a sword to attack patents in two primary ways. First, Alice is used frequently by patent examiners during prosecution. This is a major hurdle that applicants have to overcome in order to obtain patent rights in the software space. In addition, Alice is also being used by opposition parties in post-grant proceedings and law suits in an attempt to invalidate already granted patents. This is a real concern for patent owners in the automotive industry, many of whom prosecuted patent applications prior to the Alice decision, and therefore may be susceptible to such a challenge.
Shortly after Alice was decided in June of 2014, the USPTO issued eligibility guidance to be followed by the patent examining corps. This guidance outlined a two-step analysis for determining eligibility of claims under §101.
The first step did not change from the original §101 analysis. The second step, however, is essentially an analysis of the claim based on Alice. Moreover, this second step is broken down into two sub-steps 2A and 2B.
In step 2A, the Examiner is instructed to determine whether the claim is directed to a judicial exception (e.g. a law of nature, a natural phenomenon, or an abstract idea). If the claim is not directed to a judicial exception, then the claim is considered to be eligible under §101. However, if the claim is found to be directed to a judicial exception, then the claim must be further analyzed under step 2B to determine whether any element, or combination of elements, in the claim are sufficient to ensure that the claim as a whole, amounts to “significantly more” than the judicial exception.
Many automotive software-based patent claims fail step 2A, because Examiner often equate the steps of a software algorithm for controlling the vehicle as being an “abstract idea.” Thus, many automotive software-based patent claims often require detailed analysis under step 2B in order to determine eligibility. This is problematic, because the guidance as to what features are considered to be “significantly more” can be unclear.
In an attempt to clarify the Alice analysis, the USPTO has issued numerous abstract idea examples, some of which are based on actual cases decided in the courts, and some of which are based on retrospective analyses of cases that were decided pre-Alice. These examples are valuable to many practitioners because they provide a tool for analogizing automotive software-based patent claims to one or more eligible examples issued by the USPTO.
It has been found that some of these examples analogize well to automotive software-based patent claims, and can therefore be used as persuasive arguments for rebutting an Alice rejection. Specifically, these include, but are not limited to, examples 4 and 21.
Example 4 (a personal favorite) recites claims directed to a global positioning system (GPS), which is essentially a retrospective Alice analysis of the claims litigated in SIRF v. ITC. Example 4 was ultimately found eligible under step 2B in part due to the specific interaction between multiple devices (GPS receiver, microprocessor, communication receiver and a display) working in concert with one another to compute the location of a receiver. This example has proven especially beneficial for responding to claim rejections in automotive inventions that rely on specific interactions between various devices for the operation of the vehicle (e.g. autonomous systems such as braking/steering/acceleration, sensors, GPS receivers, displays, etc.).
Example 21 is also helpful for rebutting Alice rejections. Example 21 involves claims directed to a method for distributing stock quote data to be displayed on a user’s computer. Similar to example 4, these claims were also found to be eligible under step 2B, due in part to a specific internet based interaction between multiple devices (e.g. transmitter of the data source and the user’s computer).
As shown above, a common theme between these patent eligible abstract idea examples is the specific interactions between specific hardware devices to achieve a result. This theme can be readily exploited by patent practitioners when drafting automotive software-based patent claims due to the specific interactions that are inherent between various vehicle devices during operation.
Generally speaking, the USPTO guidelines provide valuable guidance that should be utilized by practitioners at various stages of the patent process. These stages include, but are not limited to application drafting and prosecution.
First, at the application drafting stage, a practitioner should avoid drafting claims at a high level of generality. The practitioner should focus the claims towards specific interactions between the various devices in the vehicle. For example, in an application for an autonomous braking system, it is likely that there are interactions between numerous devices (e.g. processor, brake actuator, sensors, data bus, etc.) within the vehicle. Thus, the claims for such an application should describe the specific connections between the various vehicle devices, and describe the specific interactions between these connected devices (e.g. sensing vehicle dynamics, sending the sensed data to the processor, performing an analysis on the sensed data, and controlling the brake actuator in a specific manner based on the analysis). This technique could also be applied in an application directed to a vehicle-to-x communication system that will likely also have specific interactions between numerous devices (e.g. vehicle processor, vehicle transceiver, infrastructure components, etc.). Regardless of the automotive application, this hardware/functional detail will help bring the claims more in line with the eligible claims in USPTO examples.
Although the claims are an important aspect of the application, the specification and figures should not be neglected. The specification and figures should be drafted to describe and show the details of the various connections and interactions between the in-vehicle devices. High level block diagrams that were commonplace in the past are no longer adequate, and should be substituted with more detailed drawings of these systems.
For example, in the patent application for the autonomous braking system described above, the figures should show how the processor, sensors, and actuators are all connected to one another within the vehicle. The specification should disclose, in detail, the specific operation and interaction between these devices. As a rule of thumb, it is better to have more technical detail in the specification for support purposes if and when it becomes necessary to make claim amendments in response to an Alice rejection.
The progress made by the courts and the USPTO in finding eligibility for specific hardware/software systems is promising for applicants in the automotive industry due to the numerous hardware and software features inherent in vehicle technology. The automotive industry is therefore positioned to continue receiving patent protection for its evolving technology.