Want an Eligible Patent: Explain the Technological Advance in Sufficient Detail

WhitServe LLC v. Dropbox, Inc., 19-2334 (Fed. Cir. 2021) (nonprecedential)

The district court dismissed WhitServe’s patent infringement complaint with prejudice — finding the claims ineligible as a matter of law.  On appeal, the Federal Circuit has affirmed. WhitServe is the brainchild of patent attorney and inventor Wesley Whitmyer of Whitmyer IP Group.  The patent at issue here. U.S. 8,812,437.

Claim 10, the focus of the case, is directed to an internet-based data-backup system and requires expected capability of “requesting, transmitting, receiving, copying, deleting, and storing data records.”  In the appeal, the Federal Circuit found that these activities are abstract ideas: “Such transmitting, saving, and storing of client records is a fundamental [and longstanding] business practice” and therefore an abstract idea.  Data storage at a generalized level is the focus of claim 10 and therefore claim 10 is “directed to an abstract idea.”

Here the system disclosed in claim 10 claims the computer function of maintaining data records, including storing records at different sites for  added protection. This is an abstract idea.

Slip op. In its analysis, the court considered WhitServe’s argument that its physical arrangement of the components offered a specific and technological improvement.  On appeal, however, the court rejected those arguments. The basic issue was that the claims (and specification) are all discussed at a too-high of a level of generality.  I see the following sentence as the key take-away line from the case:

The specification does not, however, explain the technological processes underlying the purported technological improvement.

Id. Adding the tech-features within the claim would certainly have been sufficient. Also, the court may well have accepted these same claims if the technical improvement had been simply disclosed in the specification with sufficient detail.  Of course, this implies that such a sufficiently-technical solution was available to the inventor.  This line also effectively eliminated the possibility of recovering the claim under Alice/Mayo Step 2.

The claims recite generic computer components performing routine conventional functions. Viewing claim 10’s elements in combination does not alter our conclusion because the claims lack a non-conventional and non-generic arrangement. Accordingly, we conclude that the ’437 patent does not disclose an inventive concept  and, as a result, does not transform claim 10 into patent eligible subject matter.


As part of its argument regarding eligibility, WhitServe had presented evidence of inventiveness, including secondary indicia of non-obviousness.  On appeal, the court disregarded that evidence as irrelevant.

Objecti[ve] indicia of nonobviousness are relevant in a § 103 inquiry, but not in a § 101 inquiry.

Id. Invalidity AFFIRMED.

= = = =

10. A system for onsite backup for internet-based data processing systems, comprising:

a central computer accessible by at least one client computer at a client site via the Internet for outsourced data processing;

at least one database containing a plurality of data records accessible by said central computer, the plurality of data records including internet-based data that is modifiable over the Internet from the client computer;

data processing software executing on said central computer for outsourcing data processing to the Internet from the at least one client computer, said data processing software modifying the internet-based data in the plurality of data records according to instructions received from the at least one client computer, the modifying including updating and deleting the internet-based data in the plurality of data records;

a client data request, sent from at least one client computer via the Internet to said central computer, the client data request comprising a request for a backup copy of at least one of the plurality of data records;

software executing on said central computer to receive, via the Internet from the at least one client computer, the request for a backup copy of at least one of the plurality of data records including the internet-based data in the at least one of the plurality of data records that has been modified by said data processing software;

and software executing on said central computer to transmit the backup copy of the at least one of the plurality of data record including the internet-based data in the at least one of the plurality of data records that has been modified by said data processing software to the client site for storage of the internet-based data from the at least one of the plurality of data record in a location accessible via the at least one client computer;

wherein the location is accessible by the at least one client computer without using the Internet.


46 thoughts on “Want an Eligible Patent: Explain the Technological Advance in Sufficient Detail

  1. 9

    The Federal Circuit should file a patent application for its method for determining the number of angels who can dance on the end of a pin.

  2. 8

    Yet another shameful decision among so very many from the CAFC.

    Had they but properly applied Alice / Mayo, Wesley’s claims would have easily passed muster.

    Because. They. Do.

    “The specification does not, however, explain the technological processes underlying the purported technological improvement.”

    Here’s an important point I haven’t see before:

    Since courts including district courts — and the PTO as well — regularly rely on inherency and implicitness in 102, 103, and 112, why should the 101 analysis be any different?

    Specifically, if the manner in which the invention operates (which of course includes its various instrumentalities) — as detailed and explained in the spec, provides a technological improvement, that should be sufficient.

    A technological improvement is a technological improvement is a technological improvement.

    Explicitly. Implicitly. Inherently.

    1. 8.1

      Ideally, such an eligibility basis will soon join the tool box of both prosecutors and litigators — to those fighting tooth and nail for their well-deserving, 101-beleagured clients.

      Going forward, I’ll be using it.

      This crippling of American innovation just has to end.

      It just has to.

      1. 8.1.1

        Last suggestion: With (at least) prosecution, consider including in such an arg the mandatory requirements of the Administrative Procedure Act (APA).

        I’ll be including that as well.


          Not clear why it would affect “American” innovation either… Foreign inventors can get US patents, American inventors can get foreign patents….


            I hear you – and agree.

            Pro Say tends to live up to (actual direction agnostic) his moniker, and uses terms a bit loosely.

            I take it in the general sense that the system underperforms its function of protecting innovators, who ‘by and large’ are more often disadvantaged when they ARE low cap US inventors.

            To that end, his ‘looseness’ may not be egregiously off, but certainly, your point is well made.


          The need for local patents to generate the local innovation is a subtle topic that I have found difficult to understand too.

          But the empirical data seems to be pretty clear that without local patent protection that local innovation does not flourish.

          Too big of a subject for me today, but I can tell you that I’ve listened to many people discuss this issue in academia including former CJ Rader and others.


            [T]he empirical data seems to be pretty clear that without local patent protection that local innovation does not flourish.

            There are no empirical data on this point. Pause and consider what it would even mean to generate “empirical data” on such a question.

            How would you run that experiment? Do you have a planet Earth sized “control” group against which which to compare the “study” group?


              Actually, Greg, from all the talks I’ve listened to on this issue there is a lot of empirical evidence.

              I believe there are examples of patent systems not allowing subject matter and then allowing subject matter and, as a result, a local industry growing.

              Frankly, I don’t know enough about this but I can tell you I’ve listened to people like the Commissioner of IP at the EU talk about this and had personal discussions with him where he said that there is no doubt that for local industries to flourish you need the patent protection.

              And one huge example we have is Europe not having much of a software industry (like 1/10 to 1/100) of the USA’s and it not granting patents for software. And the one country where you can get software patents is Germany and there there is a software industry.



                Software is one classic example.

                Surprisingly (given Greg’s Pharma bias), I am surprised that he does not recognize that there are certain segments of Pharma that are other examples.

                Must not fit his narrative.


            As you note, Night Writer, this is indeed an area that requires more subtlety and nuance – and that Greg typically approaches with the bluntness of an atomic bomb (given that he has a Big Pharma mindset).

            One approach that I recommend is to recognize that there ARE “little pods” in so far as patent law IS (was, and ever shall be) a Sovereign-CENTRIC law and its guiding purpose to to promote innovation in such a way as to be beneficial TO A SOVEREIGN (and NOT to some more lofty ‘greater world good’).

            Individuals – and small entities – are far more likely to be beholding to the power of the Sovereign, and will – generally – act in accordance with the Good of the Sovereign in its dealings.

            NOT SO the Big Corp model. It is of NO surprise then that the most deleterious treatment of strong patent rights (in many modes, from “Let’s Make It a Sport of Kings” to the “Efficient Infringer” resonate most strongly with Big Corp.

            This too is exactly why the effort to fix 101 was derailed with Trojan Horses in 100 and 112.

            Greg will not give you an inte11ectually honest discussion on the merits here.

            One of things that the US Sovereign should do is abrogate Citizen’s United and greatly reduce the power of the juristic person, reducing it to at least be on par with an actual real person of a US citizen.

            And THIS goes to FAR MORE than merely patent law.

            It is no accident that the US has seen its fall from grace as a true Gold Standard of innovation follow the capture of its government branches by the voice$ of the juristic corporations, who have ZERO citizen-like respect for the Sovereign.

  3. 7

    I don’t disagree with the outcome, but this case seems to provide yet another example of how SCOTUS’s Alice decision has made it virtually impossible to advise clients — at least with any confidence — about what would or would not constitute (i) an unpatentable “abstract idea,” or (ii) performing “routine conventional functions.”

    (When you drill down deep enough, doesn’t every invention use routine conventional functions to implement an abstract idea?)

    The quote that springs to mind is Justice Stewart on pornography: “I know it when I see it,” which of course is a BIG help — not ….

    1. 7.2

      I was drafting a case using video coding when Adaptive Streaming v. Netflix came out. In that case, the CAFC basically had a several line invalidity opinion: Your idea uses video transcoding, which is abstract, as with all other elements related to that; because you make no improvements in the system, the claims are invalid.

      The problem is that I have no idea how to make my application avoid this. At what point does my application solve enough problems or provide enough technological advancement to avoid this? I have no idea. Take a look at the patent in that case. They had page after page of figures, problems they were solving, etc. None of it helped.

      I’ve been practicing a long time and literally have no idea how a computer-implemented invention becomes patentable under 101.

      1. 7.2.1

        When you aren’t in AU 3600s and out of AU 3600 when your invention is non-obvious it suddenly becomes not abstract.

      2. 7.2.2

        Those claims are about changing from an original video format to a second format that is ” more suitable for the client device.” Thats it. Those claims arent even close.

        Page after page of figures, but almost none of them actually embodied in the claims….

        On the other hand, an improved compression algorithm or something would (or should) almost certainly be eligible if properly claimed. But claiming: “Converting from a first format to a more suitable second format” clearly is not that, no matter how much I dress it up.


          I have largely given up trying to make that point. There are folks around these parts who putatively profess to believe that Chinese patents incentivize Chinese innovators, EP patents incentivize EP innovators, and US patents incentivize US innovators, as if business and innovation worked in neat, little, hermetically sealed pods. Crazy, I know, but trying to point out the craziness of such a world view is like trying to explain the Pythagorean theorem to a goldfish.


          Right ksksksks, so here you say, you aren’t in AU 3600, but your claims appear or feel obvious, so the fact finder is likely to say that they are abstract under 101.

      3. 7.2.3


        Reading your post brought a flash of memory to me from a long ago “heartbeat monitoring” case (in which an improved signal was the topic).

        A quick Google brought up this link:

        link to ipwatchdog.com

  4. 6

    Berkheimer/Aatrix is dead.

    I wonder when some enterprising defendant is going to file a 12b6 motion for a 103 rejection.

    1. 6.1

      I “get” your thrust, Wt, but until the Court actually employed some mechanism to cut the Gordian Knot, those decisions ARE (still) to be considered good and binding law.

      (Yes, I am well aware of the mess in jurisprudence and the ability to make any decision in most any case and find support for whatever that decision may be)

    2. 6.2

      WT, I assume that was intended as satirical, since it is nearly impossible to ever get a patent suit disposed of with a summary judgement motion based on 103, much less with a 12(b)(6) motion.

      1. 6.2.1

        WT, I assume that was intended as satirical, since it is nearly impossible to ever get a patent suit disposed of with a summary judgement motion based on 103, much less with a 12(b)(6) motion.
        Why should it be hard? Both 101 and 103 are questions of law that involve findings of fact. We know that the Federal Circuit gives lip service to construing all facts in the light most favorable to the non-movant — at least in the 101 context. Why shouldn’t the same apply in a 103 context?

        Actually, I know the reason why. They don’t need to. The patents are already dead after 101 that they don’t have to worry about 103.

      2. 6.2.2

        Paul, I also assumed WT was being satirical, as the suggestion otherwise made no sense. You generally cannot consider documents outside the pleadings on a Rule 12(b)(6) motion; that presents no obstacle to many Section 101 motions because many patent eligibility issues can be resolved based on the claims and specification. Courts can sometimes resolve indefiniteness issues on a motion to dismiss under the same theory, if the issue can be resolved solely based on intrinsic evidence.

        But I don’t see how anyone could raise a serious Section 103 obviousness challenge without consulting prior art references that are outside the pleadings, which would disqualify such a challenge from consideration on a Rule 12(b)(6) motion. You also probably couldn’t even address the threshold Graham factors like the level of ordinary skill in the art without expert testimony, which would again generally disqualify obviousness from consideration on a Rule 12(b)(6) motion to dismiss.



          Are you dismissing the “103-like” underlying factual treatment of “conventional” (as a scrivining gift by the conflating Court)?

  5. 5

    I feel for the guy, because its easy to dump on someone’s work 20+ years after the fact, when they were writing applications for the law as it was, back in the days when Judges knew the difference between 101 and 103. I mean, to me, its not terribly innovative, but its also not INELIGIBLE subject matter.

    Standards change all the time, and unfortunately you have to engage in some measure of guessing/ future-proofing for your cases, and not simply react to every random decision that comes down. MANY years ago a client asked me to remove the bulk of the Background and Summary of a disclosure during a reissue proceeding, because their inhouse guys had just read some CAFC flavor of the day opinion holding that sometimes that language can be limiting, so they wanted to jettison everything. I tried to explain to them that this was like removing your kidney to cure a potential skin rash that hadn’t yet occurred, because there was a ton of material in those sections identifying the technical problems in the prior art that would come in handy as explanatory material if the case were litigated. They went with someone else because I wouldn’t lobotomize the case, I’ll bet they wish they had that material back now given all the 101 craziness.

    1. 5.1

      I feel for you, John Gross. After 40+ years of drafting experience it is my conviction that the basics of quality drafting standards have not changed for a century. It always was best practice, internationally, to explain what problem, in which technical field, was addressed by the inventor and how the claimed subject matter solves the problem. as Professor Cole explains in his textbook of patent drafting world-wide, the subject matter of a patentable invention is a “difference that makes a difference”. as to novelty, one claims “the difference”. as to non-obviousness, one describes in the specification what is “the difference” that the claimed novelty makes to the technical field.

      What makes patent drafting so much fun, and such a challenge, is to see through the short term profanities, and draft in a way that will find favour with the courts after a further 20 years of jurisprudence, coping on the way with the misgivings of young, impatient and ambitious in house patent counsel.

      1. 5.1.1

        I would hasten to add that if one does NOT address those “short term profanities,” then one does not even get the chance for those long term “Gee those are Good” points.

        The real craft is having such a deep understanding of your Sovereign to determine and both counter and countenance any profanity.

        The “in the old days” view is EVERY bit as f00lish as the “immediately dump everything” view that Mr. Gross offers.


          I think you are exaggerating, anon, when you inform us that if one does not indulge the short term profanities you will not even get a patent to issue. That, my friend, is fake news.


            Not so – and not limited to merely “getting” a patent.

            Your “that’s fake” is itself fake.

            It’s called patent profanity for a reason. Pretend it does not exist at your own risk (but by all means let your malpractice carrier know that’s how you operate).

    2. 5.2

      Good for you, that is not a proper purpose for a reissue anyway, and inconsistent with the usual reissue oath.

  6. 4

    You can just throw this decision on top of the giant stack of decisions that reach the right outcome for the wrong reason. These claims deserved to fail, but not under §101.

  7. 3

    Scanning the impressive list of patents and publications of this patent attorney and inventor, I could not help noting this publication: “OMG. How’d They Get a Patent on a Thing Like That?”, Medium, January 22, 2019″

    1. 3.1

      Let’s bask in the glow of the most relevant quite from that article: “Properly understood, patents have little to do with technology.”

  8. 2

    “this implies that such a sufficiently-technical solution was available to the inventor.”

    They probably could have just described the nitty gritty details of the existing prior art and passed that off as inventive technical details.

    That strategy is pretty effective at the office under the Iancu test, and I’d guess it’s even easier to fool a judge once the matter sounds excessively technical.

    1. 2.1

      Three resistors.

      Place them in parrallel.

      Three identical resistors.

      Place them in series.

      Is there a difference, Ben?

      “Multiply it by infinity, and take it to the depth of forever, and you will still have barely a glimpse of what I’m talking about.”

  9. 1

    Credit to MaxDrei for providing an interesting link for the Sovereign that he is familiar with – and which touches upon (due to our Sovereign’s Supreme Court’s RE-scrivining of the statutory law) the Gordian Knot of eligibility jurismisprudence:

    link to patentlyo.com

    But to this thread, the takeaway is “clear:” the Court will conflate 103 into 101 when and how it wants to, but any patentee trying to do the same will not be allowed.

    1. 1.1

      anon, I had no idea that my two links on the subject of post-filed evidence in support of non-obviousness had anything to say about raw eligibility.

      As to conflating 103 with 101, that’s what happens in the English courts but not at the EPO Boards of Appeal .

      1. 1.1.1

        They are pertinent Especially since my Sovereign (through the Supreme Court’s re-writing) HAS conflated matters.

        Further – those links show just how UN-pristine Your Sovereign has fudged things up (even as you appear unwilling to admit, or unable to recognize).


            LOL – “Dozens” aka Greg “I Use My Real Name” DeLassus has a ‘late” reply directly to my moniker – supposedly, something that would be impossible for him to do.

            Is he peeking at me?

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