Claim Specificity Required for an Inventive Concept

Dropbox, Inc. v. Syncrhonoss Tecnologies, Inc. (Fed. Cir. 2020)

The appellate court here invalidates three Dropbox patents as ineligible (abstract ideas) and also confirms that the lawsuit was properly disposed on the pleadings. U.S. Patent Numbers 6,178,505, 6,058,399, and 7,567,541.

Looking at the ‘505 patent.  Claim 8 requires the following:

  • An “apparatus” for providing an information resource to a user.  The apparatus has the following element:
  • “an access checker” that (a) compares the “trust level” of the user identification mode, the network-path, and the encryption of the access request against (b) the sensitivity level of the resource being obtained.

The claims do not spell-out how this checking or comparison will take place, and the Federal Circuit notes that the specification also fails to delve into any “technological solution.” “Instead, the specification largely treats the ‘access filter’ as a black box.”  To be patent eligible:

The patent has to describe how to solve the problem in a manner that encompasses something more than the principle in the abstract. . . . And, that solution has to be evident from the claims.

Slip Op.

Specificity Required for an Inventive Concept: Regarding Alice Step 2, the patentee argued that its approach provided a more “economically secure way to transmit data.”  On appeal, the Federal Circuit found that advance – even if true – to be insufficient.  Rather, a claim includes an “inventive concept” at Step 2 when it “recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art.” Slip Op. (Quoting BASCOM).

On the Pleadings. In its (amended) complaint, Dropbox included five paragraphs alleging how the asserted patents provide an advancement over the prior art.  The problem, as noted in the prior paragraph, was that the allegations were not sufficiently specific.

The district court opined that some of these allegations found in the complaint should be disregarded as “attorney arguments . . . attempting to manufacture a factual question” insufficient to defeat a motion to dismiss. That holding is by the district court is questionable regarding complaints. On appeal, the Federal Circuit did not address the issue directly but instead held that the allegations were insufficient because the alleged innovative advance was not specifically tied to the claims themselves.

 

38 thoughts on “Claim Specificity Required for an Inventive Concept

  1. 9

    Received this curious jack-in-the-box for Father’s Day.

    Has creepy, Halloween-like dripping blood “Death Squad” lettering on each of its four sides.

    Assuming it must have something to do with the PTAB, I begin slowly turning the handle.

    To my surprise, out popped the grim reaper, scythe an’ all.

    Has a small sign hanging from his neck that reads . . . Federal Circuit.

  2. 8

    Speaking of Alice-type 101 unpatentable abstractions, the Quinn blog notes that: “While some courts have ruled that lack of preemption of abstract ideas does not make an invention patent-eligible [Ariosa Diagnostics Inc. v. Sequenom Inc.], others have not referred to it at all in their patent eligibility analysis. [Enfish LLC v. Microsoft Corp., 822 F.3d 1327] Contrary to those examples, recent cases from Federal Courts have used the preemption test as the primary guidance to decide patent eligibility.”
    If so, the preemption test [from the Sup. Ct.] seems to me to be, desirably, a somewhat more objective test for whether a claim is unpatentable on that basis. If the claim is so broad that it covers every possible way of achieving the indicated desired end result it should fail under a preemption test.

  3. 6

    One can hope that enough of these Fed. Cir. decisions clearly objecting to patents blatantly devoid of any 112 enablement and claiming only the untaught desired results, like a Jules Verne story, will finally get the attention of the PTO for 112 enforcement education [and also educate clients paying lawyers for such loser lawsuits] even if that education has to be done in a D.C. under the 101 rubric in order to use FRCP 12(b)(6) to avoid wasting more court time.

    1. 6.1

      objecting to patents blatantly devoid of any 112 enablement and claiming only the untaught desired results,

      The underlying problem is that what Dennis takes as a given (the point of novelty) is never really decided at the office. Assume that the office made the enablement rejection. The response would be that there is no evidence that the feature was unknown in the art, and therefore doesn’t require teaching in the instant specification.

    2. 6.2

      If the office really wanted to do gold-star examination, the first and last analysis in every application would be a 112(a) one. The first thing that should go on the record is the applicant admitting what they are relying upon prior skill in the art to enable (i.e. “Claim 1 includes a processor, the specification does not teach how to make and use a processor because the knowledge of how to make and use a processor was known in the art”) to define any possible avenues of controversy and the last thing that should be done before an allowance is pointing to where in the specification there was an enabled teaching that constitutes an advancement over the art. (“Claim 1 includes codes that performs function X, which is taught at Spec, paras. 30-40. This feature renders the claims non-obvious.”)

        1. 6.2.1.1

          I’m paid to compact prosecution. If my first action was essentially “Before we start taking about prior art references, I make a 112(a) rejection to each and every element because the specification fails to independently teach how to make and use the element. You may obviate this rejection on an element-by-element basis by relying upon the previous knowledge of one of ordinary skill in the art” I’d be tossed out. And yet that is how every single application should start. It’s not like applicant could add the subject matter post-filing, so you mind as well start by making it clear what is unquestionably prior art by agreement. That would have the benefit of focusing the prior art search to the plausibly inventive features anyway.

          1. 6.2.1.1.1

            “I’m paid to compact prosecution. If my first action was essentially “Before we start taking about prior art references, I make a 112(a) rejection to each and every element because the specification fails to independently teach how to make and use the element. You may obviate this rejection on an element-by-element basis by relying upon the previous knowledge of one of ordinary skill in the art” I’d be tossed out.”

            If it was just a matter of compact prosecution, what stops you from including that 112(a) in your standard FAOM? I’m pretty sure the reason that behavior would get you tossed out wouldn’t be “compact prosecution.”

            1. 6.2.1.1.1.1

              If it was just a matter of compact prosecution, what stops you from including that 112(a) in your standard FAOM? I’m pretty sure the reason that behavior would get you tossed out wouldn’t be “compact prosecution.”

              Oh it definitely is. It is entirely doable right now, it would simply require two entirely divergent actions. It would require a first set of rejections based on the usual assertion that the cited prior art taught the elements, and a second set of rejections that assumed that the applicant was challenging that the prior art did not teach the rejections. i.e. You’d backstop every possible attack on the 103 with alternate grounds 112(a) rejections so that the only way that a claim would issue is if (1) the art didn’t know about some feature (non-obvious argument is true) and (2) this specification taught it (enabled) which is, you know, kinda the actual law.

              Requiring that the claim meets all of the criteria simultaneously is not tossable behavior – it’s our mission statement. The “problem” is not a legal one but a fiscal one – If your first action merely makes 112(a)s the applicants lose three months and have to pay an attorney to respond before they get the lay of the land with prior art, and if your first action includes the prior art and also makes the 112(a) rejections the office has to assess production based on every examiner doing double work. Given those options, the office polices the 103 rejection being made and does not police the lack of enablement rejection being made. The end result is that (surprise surprise due to the enforcement) a 103 rejection is made in almost every case, and if it is overcome the 112(a) issue isn’t even examined in practically any case – Issuing a 112(a) rejection would be an uncompensated second non-final and a quality demerit regardless of how true the 112(a) rejection is. It’s “bad” to make “unnecessary” 112(a)s given the cited prior art (as if the Applicant is going to roll over and isn’t going to challenge your prior art citations at all) but it’s “fine” to allow following a reversal of your prior art mapping without revisiting 112(a) – as if 103 is a more important or more primary statute than 112 is.

              Make no mistake, compact prosecution is a money-saving feature, not a quality feature. It’s unquestionable that the more time and resources you dedicate to analyzing a decision the more likely that the decision will ultimately stand up to scrutiny, so why are there rules that punish examiners for good-faith reanalysis? The reason compact prosecution and no-credit second non-finals exist is specifically to make prosecution resolve timely, which helps both the office and the applicant with a supposedly minimal loss to the public. But an applicant prevailing on a 103 argument (which means the Examiner’s assumption that “the art knew [something]” was incorrect) naturally invites a 112(a) reassessment. The fact that the reassessment is penalized can only mean that resolving the application is more important than getting the 112(a) question right.

              1. 6.2.1.1.1.1.1

                This:

                “… if your first action includes the prior art and also makes the 112(a) rejections the office has to assess production based on every examiner doing double work.”

                from Random is for me a moment of revelation, about the importance of managing the examination process in a way that optimally serves the patent community outside the PTO (rather than the interests of PTO management).

                What I’m used to (at the EPO) is indeed what Random dismisses as “double work”.

                A search report issues, often within 3 months of filing, that will be a report of the one and only search that the Office will be conducting for this particular patent application. That report is accompanied by an opinion on patentability that includes ALL the reasons why the docs as filed fail to meet ALL of the requirements of patentability under the EPC.

                Woe betide any Applicant then, who serves up, in response, a set of docs (spec, claims, drawings) which STILL don’t meet all the requirements. The Division has the tools available to it to crimp to a minimum any further time spent on further prosecution.

                There is a serious difference of opinion about the examination process, across the Atlantic.

                The European view is that it is not only possible but also necessary to draft a disclosure and a set of claims that is compatible with the EPO examination process.

                US attorneys, to the contrary, seem to think that the claim drafting process is feasible only after having received the PTO search report (on the speculative claims of the originally filed application).

                Wait and see, folks: with the transition to First to File, the WD requirement will assume ever greater importance.

                1. MaxDrei,

                  I have commented on this before, but you still seem to not grasp nuances of US practice.

                  Your comment of “US attorneys, to the contrary, seem to think that the claim drafting process is feasible only after having received the PTO search report (on the speculative claims of the originally filed application).

                  misses.

                  One aspect of the miss is that you seem to somehow think that the ‘no new matter’ rule is absent in US practice.

                2. If I understand it right, objections that an amendment has added matter are made under 35 USC 112(a), that the application as filed lacks written description. In the Patentdocs blog item of 2 days ago, commented on by you, the opening words are:

                  “The written description requirement has had a twenty-five year renaissance, particularly in the chemical and biotechnology arts as a way of restricting claim scope to what an inventor has actually invented”.

                  The imperative to limit claim scope to the “matter” in the application as filed will assume ever higher importance, as i) the rivalry (under FtF) between competing Applicants gets ever more vigorous and ii) it increasingly dawns on the USPTO what are its responsibilities when handing out patents under a FtF law.

                  And that, in turn, in the patent drafting community, will put the spotlight on claim drafting skills, like never before.

                  Only my opinion though.

              2. 6.2.1.1.1.1.2

                In 1600 we routinely do 112(a) written description rejections and 103 rejections in the same OA

              3. 6.2.1.1.1.1.3

                “the office has to assess production based on every examiner doing double work”

                Except you know they wouldn’t. If a new Director adopted your interpretation of 112, they would simply have the Office release some new training and expect the additional work to be completed in the previously allotted time. Exactly like they did with Alice.

                I don’t disagree with much of the general background you reference, but it would not take double work to provide the 112 rejections, and that effort would pay for itself on final and RCE. If your interpretation of 112(a) was accurate it would be devastatingly effective, and would make most actions after FAOM trivial. So if you could do these rejections, you would.

                The real reason why we don’t issue those 112 rejections is because most SPEs and the 3600 TC directors don’t share that interpretation of 112(a). Eventually they’d lose patience with you, and you’d start getting errors for applying a “wrong” interpretation of 112. The tolerance for 112(a) rejections is extremely low within 3600 management. They simply do not share your interpretation of 112(a).

                1. If your interpretation of 112(a) was accurate

                  It is not.

                  No need to invest any further speculation into those weeds.

          2. 6.2.1.1.2

            I’m not sure it should be done under 112 by focusing on enablement, but I agree with the underlying sentiment. The Office should not have to waste time trying to find a prior art reference establishing the conventional nature of elements or steps that everyone agrees are conventional.

            It seems to me that the more straightforward approach is taking of official notice for elements/steps that are truly conventional, and a 37 CFR 1.105 request for information for elements/steps that the examiner is unsure about, but believes to be conventional.

            My understanding is that examiners are extremely limited in their ability to use a request for information, but maybe that should change.

            1. 6.2.1.1.2.1

              “The Office should not have to waste time trying to find a prior art reference establishing the conventional nature of elements or steps that everyone agrees are conventional.”

              Well, then it’s a bit of a moot point for me since business methods prosecutors will never admit anything is conventional on the record.

              Is there any reason to be skeptical of the obvious explanation for why the office wastes time on conventional elements, “because stakeholders want it that way”?

        2. 6.2.1.2

          There is rampant and ongoing confusion about what it is that you are paid to do as an examiner and the internal metrics of your performance as an examiner.

    3. 6.4

      Devoid of any enablement? Unless you mean that the specification doesn’t really add to the space of enabled technology, I don’t see how this is tenable. Even back in 1997, the knowledge of the PHOSITA enabled subsets of the claimed invention.

      1. 6.4.1

        P.S.

        It was disappointing that you never fleshed out your “very disputable”* claim, Paul. That in conjunction with this honestly makes me wonder about what you think is doable for one of ordinary skill in the computing arts.

        *https://patentlyo.com/patent/2020/06/gentlemen-privilege-playing.html

  4. 5

    Does anyone see a case against claim 1 of the ‘505 patent being anticipated by ancient Unix file permissions?

  5. 4

    I’m amazed that the CAFC still has the energy to write up non-precedential opinions on 101, much less ones that try to explain the law in novel ways. What’s the point? No one, not the PTO, district courts, patent bar, inventors, congress, or the Supremes appreciates the effort. Just R. 36 it.

  6. 3

    by the by,

    non-precedential – Before PROST, Chief Judge, WALLACH and HUGHES, Circuit Judges.

    HUGHES, Circuit Judge.

  7. 1

    Rather, a claim includes an “inventive concept” at Step 2 when it “recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art.”

    Hey that’s not too bad.

    The claims do not spell-out how this checking or comparison will take place, and the Federal Circuit notes that the specification also fails to delve into any “technological solution.” “Instead, the specification largely treats the ‘access filter’ as a black box.”

    Again, to pacify the people upset at 101, can someone explain to me why this isn’t a 112(b)? In other words, pretend the “particular arrangement of elements [that] is a technical improvement over the prior art” wasn’t part of a 101 analysis, but instead was part of a “reasonable certainty” analysis under 112(b). Does anyone think that the claims are reasonably certain when the novelty (i.e. something never seen before) is not described in the claims? Assuming (and apparently it is untrue here) that the specification did explain how the novelty was achieved, is a claim that merely claims the functional result a reasonable certainty compared to a specification that only describes one manner of achieving the result? Isn’t this the exact same situation (claim claims novel functional result) that the Supremes balked at in Wabash and Nautilus v. Biosig?

    1. 1.1

      Almost every 101 case should be a 112 or 103 case… that’s the doctrinal problem.

      1. 1.1.1

        Almost every 101 case should be a 112 or 103 case… that’s the doctrinal problem.

        Not really. There is a difference between saying “I invented a telegraph, and here’s an overbroad claim that does claims the functional utility of a telegraph” and “I invented the function of printing at a distance, of which the spec-described telegraph is one embodiment.” The former is a 112(a)/(b) issue, the latter is a 101 issue. It just so happens that in this case (where the novelty is a black box), the latter case is also a 112(b) in addition to a 101.

        1. 1.1.1.1

          A patent claim is literally a “claim” that you “invented” the claimed subject matter. How do you split that hair when you are just looking at the claim and the spec? Are you supposed to look at the intent of the applicant?

    2. 1.2

      Again, to pacify the people upset at 101, can someone explain to me why this isn’t a 112(b)?

      I am reminded of Malcolm’s “Whatever” blender philosophy…

    3. 1.3

      “Again, to pacify the people upset at 101, can someone explain to me why this isn’t a 112(b)?”

      I don’t think this will pacify anyone.

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