by Dennis Crouch
Glasswall Solutions v. ClearSwift (Fed. Cir. 2018) (non-precedential)
Glasswall’s patent claims are directed to a process of regenerating electronic files in a way that cuts-out non-conforming data. The approach here could be used as a virus filter. U.S. Patent Nos. 8,869,283 and 9,516,045. Although the generalized approach here is a nice goal, the Federal Circuit noted that the claims themselves did not actually claim how to achieve the goal.
The claims at issue … do not purport to claim how the invention receives an electronic file, how it determines the file type, how it determines allowable content, how it extracts all the allowable data, how it creates a substitute file, how it parses the content according to predetermined rules into allowable and nonconforming data, or how it determines authorization to receive the nonconforming data. Instead, the claims are framed in wholly functional terms, with no indication that any of these steps are implemented in anything but a conventional way.
So, taking this conclusion about these “wholly functional” terms, the next step is to ask whether that conclusion implicates any particular patent doctrine.
In O’Reilly v. Morse, 56 U.S. 62 (1853), the Supreme Court invalidated the broadest of Morse’s telegraph claims — claim 8 that had broadly claimed the process of sending messages at a distance without being limited to any particular machinery. In Morse, the court held that the claim consisting of a single functional limitation was “too broad and cover[ed] too much ground.” Later, in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), the Supreme Court was faced with a situation closer to Glasswall‘s. In that decision, the Supreme Court found that the claimed oil-well measuring apparatus included a wholly functional element at the invention’s point of novelty. That lack of specificity led the court invalidate the claim as indefinite. The Halliburton Oil court wrote that it is improper for a claim to describe its “most crucial element . . . in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus.” Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).
Back to the present case. in Glasswall, the court did not touch definiteness but rather focused its attention on eligibility under 35 U.S.C. 101 (as expanded by judicial decisions). Here, the “wholly functional” language of the claims led the court to finding them directed to an unpatentable abstract idea.