Eligibility: Turning Application On-and-Off for Authentication Patent Eligible

by Dennis Crouch

CosmoKey Solutions v. Duo Security (Fed. Cir. 2021)

Patentee wins this one–with the Federal Circuit reversing the district court and finding the claims on patent-eligibility under Alice step-two.  This is another case that serves as a data-point, but I struggle to differentiate it from similar cases finding claims ineligible.

CosmoKey’s U.S. Patent No. 9,246,903 is directed a low-complexity, high-security method of authenticating a user transaction. (2011 priority filing date).  The basic idea here is two-factor-authentication that uses a second communication channel (mobile phone) to authenticate a transaction.  This general idea was already in the prior art, but the claims add a couple of additional features:

  • Authentication function is normally inactive on the mobile device but is activated by the user for the transaction; and when once the transaction is done the authentication function is automatically deactivated.  This on/off function is designed to both save power on the device and also help prevent hacking.
  • As part of the authentication, there is a check on how long the user takes to respond (whether a predetermined time relation exists between the transmission of the user identification and a response from the second communication channel);

See ‘903 Patent Claim 1.

The district court found the claim ineligible under Section 101 after finding them closely parallel to the authentication method claims invalided in Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014 (Fed. Cir. 2017) (nonprecedential opinion).  In particular, the district court found the claims directed to “the abstract idea of authentication—that is, the verification of identity to permit access to transactions”  (Alice Step 1) and that the claims recite generic computer functionality that were all well understood, routine, and conventional activities at the time of the invention (Alice Step 2).

On appeal, the Federal Circuit has reversed — holding that the patent “discloses a technical solution to a security problem in networks and computers.”  That statement suggests reversal on Alice Step 1; but the court actually leapt to Step 2 without a clear holding on Step 1.  Here, the court found that the claimed steps were (1) developed by the inventors; (2) not admitted prior art; and (3) yield advantages over the described prior art.  The court noted the difficulty with this case — the purpose of the invention was to “reduce significantly” “the complexity of the authentication function.”  But, simplification can quickly suggest abstraction.

Eligibility Jurisprudence: It has been quite difficult to nail down the meaning of “abstract idea.”  The Supreme Court suggested that we look back to prior cases to find the answer, and that is the same approach that has been followed by the lower courts as well as the USPTO.  Here, however, the Federal Circuit cautioned that analysis:

While prior cases can be helpful in analyzing eligibility, whether particular claim limitations are abstract or, as an ordered combination, involve an inventive concept that transforms the claim into patent eligible subject matter, must be decided on a case-by-case basis in light of the particular claim limitations, patent specification, and invention at issue. Here, the  claim limitations are more specific and recite an improved method for overcoming hacking by ensuring that the authentication function is normally inactive, activating only for a transaction, communicating the activation within a certain time window, and thereafter ensuring that the authentication function is automatically deactivated.

Slip Op.

The court’s opinion was written by Judge Stoll and joined by Judge O’Malley.  Judge Reyna penned a concurring opinion arguing that the two step Alice approach should be taken in-order:

The majority skips step one of the Alice inquiry and bases its decision on what it claims is step two. I believe this approach is extraordinary and contrary to Supreme Court precedent. It turns the Alice inquiry on its head.

Concurring Opinion. Judge Reyna goes on to explain how Step 2 should be seen as a “lifeline” that only comes into play to save claims that are directed toward abstract ideas.  But, we can’t know if there is “something more” without first answering the question “more than what.”

Step two is rendered superfluous and unworkable without step one. Without the benefit of a step-one analysis, we are hobbled at step two in reasonably determining whether additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. And by skipping step one, we create a risk that claims that are not directed to an abstract idea might be deemed to “fail” at
step two.

Id.  Judge Reyna then goes on to conclude that the claims are not directed to an abstract idea. Id. Quoting the majority statement that “the claims and specification recite a specific improvement to authentication that increases security, prevents unauthorized access by a third party, is easily implemented, and can advantageously be carried out with mobile devices of low complexity.”

79 thoughts on “Eligibility: Turning Application On-and-Off for Authentication Patent Eligible

  1. 4

    PSA: A person with Alzheimer’s may become suspicious of those around them, even accusing others of theft, infidelity or other improper behavior. While accusations can be hurtful, remember that the disease is causing these behaviors and try not to take offense.

    1. 4.1

      … Oh brother.

      The view that anything can be dismissed with a label of “conspiracy” and thus associated mental illness is by now a well trod tactic of the Liberal Left.

      Reminds me of the story of the boy who cried wolf.

      And the story that the coronavirus was not related to any (wink wink not there) gain of function research in any Wuhan lab.

      But ALL of Greg’s positions are pristine and we can definitely trust his view points. After all, he is open about his connections to Big Pharma, and is not consternated about any of the Liberal Left plans (except those associated with Big Pharma, like Biden’s backing of the India/South Africa motions)…

      Greg’s hypocrisies are ‘ok’ because he is always ‘polite’ about them, after all.

      1. 4.1.1

        This business of attacking people as mentally ill when they don’t agree with you is coming from the far left and Marxism. No need to address the substance of what someone says. If they don’t agree with you, then they need reeducation.

      2. 4.1.2

        +1

  2. 3

    Wandering is generally doing a good job responding to all the nonsense.

    Just remember that information is a physical property. That processing information is a physical process that requires time, space, and energy.

    That under most of the CAFC case law that a program that performed the functions of a CAFC judge would be ineligible for patentability.

    That the central lie of the CAFC with Alice is that a set of claims to information processing can be abstract when it is not claiming something that is notoriously well-known outside of information prior to the invention.

    Grow a pair you c o w a r d l y s c u m.

    1. 3.1

      A large portion of information processing “inventions” do not merit being usurped from the public domain. There is nothing particularly magic about information processing requiring “time, space, and energy.” Most importantly, rarely do information processing applications have claims that relate to the “time, space, and energy” that are relevant to information processing (i.e. affect the operation of the computer).

      Applications similar to Electric Power Group absolutely are not patent worthy. They are merely using ordinary techniques that would be applied by any person of ordinary skill faced with the same problem. They do not promote the progress of science and useful arts. (Though, like a lot of people, I think that probably a more robust application of 112, 102, and 103, is more appropriate.)

      Through, I will contrast that with a lot of the MPEG patents. A lot of them (but not all of them) do disclose novel ways of manipulating and processing data and specifically claim those techniques.

      1. 3.1.1

        Ordinary >> “not patent worthy.”

        So, to summarize this Marxists views, we aren’t going to have laws we apply, but we are going to look at the invention and based on our feelings decide whether they are “worthy” of a patent.

        This was the system used in the USSR, by the way.

        1. 3.1.1.1

          This was the system used in the USSR, by the way.

          [Citation needed]

          to summarize this Marxists views

          Again, you demonstrate you have no idea what marxism is.

          we aren’t going to have laws we apply, but we are going to look at the invention and based on our feelings decide whether they are “worthy” of a patent.

          I was talking about policy. I said that 112, 102, and 103 are better vehicles. I have repeatedly said I hate 101 jurisprudence. And yes, patent law is 100% policy. The Constitution says nothing specific about patent law other than to give a value statement (“promote the progress of science and useful arts”). The rest is policy. People can in good faith disagree what “promote[s] the progress of science and useful arts!” I do not believe that a lot of information processing “inventions” further even this nebulous value statement. This does not mean I immediately want to seize the means of production and overthrow the bourgeoisie.

            1. 3.1.1.1.1.1

              Interesting find there. What a window into dysfunction, propaganda efforts, and soviet’s peen envy of the US.

              Just going through it they think they’re issueing as many as the US was, but mysteriously they don’t even do medical/chemical patents. Still further, the way they implement most of their “patents” which are just certificates, is weird beyond belief due to their centralized goverment/command structure. They make the local factory “owner/operator/foreman/head honcho” give the “expert” bureaucrats in Moscow etc. reasons why they don’t want to use xyz invention. I presume they can’t just say “because it is the su xor and I don’t wanna”. Further, you can see through the whole article that the author is trying to compare the SU to america in a pen-peen measuring contest, thinking the soviets are anywhere near big daddy US’s pen-peen size (lol). Additionally they note that in the SU it’s like totally respected to get to be a prolific inventor. Yes, I’m sure all the prettiest natashas undergarments fell at the barest mention of the prolific nature of your inventing as compared to the local sports star’s title. Finally it is worth noting that they describe the overall bureaucratic setup in very formalistic terms such that it would be easy to see how people higher up the chain can squash a grant np.

              As an aside, it’s hilarious to look back on the part about how the inventor might get a better apartment if his patent is accepted because people’s housing is based on how useful they are to the STATE (definitely this doesn’t mean everyone is the state’s slave lol). Truly on their way to a soviet utopia there.

              The article itself is a great piece of propaganda though, making everything seem hunky doorey while it is truly a mess. The court system never ruling that what the executive did was a boo boo is hilarious as well. But at the least your patent will never go down.

              Further the numbers in the tables are hilarious. The foreigners always go for the patent rather than the certificate, but the situation is the opposite for people in the SU.

              1. 3.1.1.1.1.1.1

                Neo-Marxist Ordinary believed every word of it 6.

                1. I have no doubt bro. The one big thing this left me wondering about though was: where are the archives of the soviet system, and if it continued, why do we not have rusky patent collections to look through in the modern day? What even are the ruskies doing these days?

        2. 3.1.1.2

          [W]e aren’t going to have laws we apply, but we are going to look at the invention and based on our feelings decide whether they are “worthy” of a patent.

          I share your dissatisfaction with this state of affairs. The carefully systematic way that Judge Rich used to evaluate patent validity was the right way to do it. The loosey-goosey approach advanced by Justice Stevens, Justice Kennedy, and centuries of their judicial forebears is distinctly inferior.

          Still and all, take heart. The XX century witnessed profound, almost miraculous technological progress despite the fact that for almost all of the XX century, “the only patent that [wa]s valid [wa]s one which [the Supreme] Court ha[d] not been able to get its hands on.” Jungersen v. Ostby & Barton Co., 335 U.S. 560, 572 (1949) (Jackson, J., dissenting).

          We are moving back into such a legal regime. As we saw in the XX century, however, such a regime can still achieve a patent system that functions very well for its intended purpose (i.e., fostering tech progress). There is no reason to suppose that we are headed for anything like as poor-functioning a system as the Soviets had.

          1. 3.1.1.2.1

            There is no reason to suppose that we are headed for anything like as poor-functioning a system as the Soviets had.

            You mean, other than what Biden is doing, eh?

      2. 3.1.2

        OSitA,

        Not sure if you have been paying attention, but the issue is NOT how you seem to want to portray it.

        That is, the Ends simply do not justify the Means, and NO notion of “that’s just not patent worthy” can supplement the means being employed of wrecking the law as written by Congress for patent eligibility.

        So while here you DO qualify your statement with the “(Though, like a lot of people, I think that probably a more robust application of 112, 102, and 103, is more appropriate.)“, this misses the aspect that Night Writer’s mantra on the non-abstractness of information processing (as a more pure physics state of reality) is ONLY concerned with the bas tur dization of eligibility by the Courts.

        Your note of “There is nothing particularly magic about information processing requiring “time, space, and energy.” MISSES the fact that the Courts ARE treating such as if magic were in play — at least in the form that ‘magic’ is an analog to “abstract.”

        Put directly: you don’t get to dismiss Night Writer’s complaint by pretending that the complaint is not on target to what is really going on. Even if you want to place yourself in the camp of “they should use 112, 102 and 103,” such is just not on point to the comment that you are responding to.

        1. 3.1.2.1

          There really was no point to the comment I was responding to other than to bring up a magic non-sequitur about the nature of bits being flipped in a transistor.

          Current 101 jurisprudence is trash. NW “contribution” does not change the needle in any direction.

          1. 3.1.2.1.1

            Ordinary you have just no clue.

          2. 3.1.2.1.2

            That’s just it, OSitA – it is your reply that is a non-sequitur, and Night Writer’s thrust concerning that type of “magic” is very much on point to the discussion of patent eligibility under 35 USC 101.

            That you may also agree that current 101 jurisprudence is trash does not change the fact that your view (of Night Writer’s argument being not on point or somehow itself a non-sequitur) is in error.

            Your view if wrong on the point provided.

            I will grant you that Night Writer’s argument is not one of my favorites. But I will not grant you that such an argument is not on point or is not correct.

            1. 3.1.2.1.2.1

              aak, “your view if wrong” should read “your view IS wrong”

      3. 3.1.3

        A large portion of information processing “inventions” do not merit being usurped from the public domain.

        [Citation needed]

        (right back atcha)

  3. 2

    I struggle to differentiate it from similar cases finding claims ineligible.
    Patent eligibility is panel dependent. There is no universally-applicable “law” on patent eligibility. Rather, there are competing philosophies.

    On one hand, there is a philosophy, espoused by many on the Federal Circuit, that inventions involving software shouldn’t be patent eligible. They dress this philosophy up in a bunch of mumbo-jumbo completely untethered from the statute, Supreme Court case law, or reality in order to find an invention is directed to patent ineligible matter under 35 USC 101. If, for example, you have Dyk and Prost on your panel, your patent is D … E … A … D. There are many more panel combinations than that, but I feel pretty safe saying that any panel in which these two constitute the majority will end up with an invalid patent.

    There is also another side that believes that not every software-related invention is directed to patent ineligible subject matter. They push back by creating different law in an attempt to reign in the other side’s mumbo jumbo. This panel had, for example, O’Malley and Stoll — two jurists more sympathetic to patents. BASCOM is another example of a good panel: Newman, O’Malley, & Chen (although Chen is definitely variable). Thales v. US had Moore and Stoll.

    In the end, there is so much inconsistent law out there that either side can pick and choose whatever case law they want and end up with the result they want. When I read a decision, I can tell by just who is on the panel how the result is going to go. The kicker for patent owners is that there are very few “good” panels. The Federal Circuit is comprised of some judges with strong anti-patent feelings, strong pro-patent feelings, and fence sitters that will go whatever way the wind is blowing (and right now, the wind is perceived as being blowing a very anti-patent way). There are very few “good” panels for patent owners since there are only a small cadre of really pro-patent judges.

    Don’t confuse post facto justifications for the real reason why a patent is determined to be patent ineligible. Patent eligibility is panel dependent … period.

    1. 2.1

      +1

      1. 2.1.1

        +1

        Yes well put Wandering.

    2. 2.2

      “comprised of” is not the sort of English a patent attorney ought to use.

      1. 2.2.1

        CRP: you only have one eye and you haven’t learned to levitate. I hardly think you are in any position to criticize.

      2. 2.2.2

        Actually, it is precisely the sort of English a patent attorney ought to use. A non-patent attorney might have used “made up of” instead, which to my mind is imprecise and ugly. For one thing, “made up” is ambiguous. “Consists of” would have been fine also, but I can’t see any strong reason to prefer it over “is comprised of”. What aspect of the meaning is not clear to you?

    3. 2.3

      The strawman position “that inventions involving software shouldn’t be patent eligible” has never been espoused by any member of the Federal Circuit so far as I am aware.

      If the inventive aspect of your claim is not technical in nature, then you are probably going to have a problem regardless of the panel. If the inventive aspect of your claim is technical in nature and appropriately claimed and adequately disclosed, then you have a great chance at a good result regardless of the panel.

      There are certainly differences of opinion as to the proper inquiry at steps one and two, but these do not necessarily equate to differences of opinion regarding the bottom line result in every case. Note that in this case Judge Reyna concurred in the ultimate result but would have held the claim eligible at step one with no need to proceed to step two.

      1. 2.3.1

        Perhaps you would be interested to read Judge Mayer’s concurrence in Intellectual Ventures I LLC v. Symantec Corp. (838 F.3d 1307) opining that “all software implemented on a standard computer should be deemed categorically outside the bounds of section 101”?

        1. 2.3.1.1

          Great point! I had completely forgotten about that concurrence.

          Notably Dyk wrote the majority opinion in that case. I suspect that even he does not agree with Mayer with respect to such a categorical proposition, but I could be wrong.

        2. 2.3.1.2

          There is another one that said it too. I think it was Dyk who said it at some conference about three years ago.

      2. 2.3.2

        Doerre,

        What is that you mean by “technical,” and where do I find a reference to this in the patent law as written by Congress (as opposed, say, to some law of some foreign sovereign)?

        Your “great chance” renders your statement simply out to lunch.

      3. 2.3.3

        J. Doerre >>If the inventive aspect of your claim is not technical in nature,

        You can always tell an anti-patent judicial activists as they love to make proclamations in which words without definitions in U.S. Patent law are used. They also always frame their proclamations based on their personal feelings if something has passed their bar.

        The simply answer to people like this is that you are not an American. You do not believe in the principles of the Constitution and common law. You would like to be a king or queen that just tells us the result based on your feelings.

        I can only hope people like you are someday forced back into the shadows.

        1. 2.3.3.1

          Wow. We should put up a poll on whether this is your most unhinged rant yet.

          1. 2.3.3.1.1

            It’s not.

            1. 2.3.3.1.1.1

              Ordinary and Ben are clearly one of “those people.”

            2. 2.3.3.1.1.2

              Funny how the far left like Ben and Ordinary never come back with substance but rather claim that the person has gone mad or is crazy.

              Funny that this is the tactic of a Marxist. No need to respond with substance. The person doesn’t agree with me so they must be mentally ill and need reeducation.

              1. 2.3.3.1.1.2.1

                The person doesn’t agree with me so they must be mentally ill and need reeducation.

                The faux indignation from Greg “I Use My Real Name” DeLassus perfectly falls into that very same category.

              2. 2.3.3.1.1.2.2

                The person doesn’t agree with me so they must be mentally ill and need reeducation.

                The lack of self-awareness in this statement coming from you is comically astounding.

              3. 2.3.3.1.1.2.3

                It almost like the far right, like yourself, like to “other” people and say people are not “true Americans” if they disagree with you.

                1. Ordinary, I am a liberal D and have been for decades.

                  “true Americans” does not include Marxists.

                2. I immediately chuckled at the irony of OSitA coupling a put-down about lack of self awareness, and turning around and accusing Night Writer of being far right.

                  Maybe OSitA is one of those Liberal Left that thinks Joe Rogan is right wing….

                3. No liberal D would use the term “true American.” The phrase is antithetical to democratic American society. We disagree a lot on policy, but I regard you an American nonetheless.

                  Additionally, spurious allegations of the spooky “marxism” aren’t very liberal D either. As if you know what it is anyway (the marxists wouldn’t have me).

                4. Reciting “I am a liberal D” as the regular preliminary to an uncritical regurgitation of FOX news talking points does not actually make the talking points any more convincing. Indeed, the regularity with which we have all seen “I am a liberal D” precede assertions that are so obviously and historically associated with the political right in the U.S. makes me doubt the sincerity of the profession of left-leaning sympathies. Not that my doubts on this point actually matter…

                5. Ordinary, I put it in quotes “true Americans” because that is what you used —NOT ME.

                  Greg, if you doubt me being a liberal D, then I doubt you understand politics, which is pretty typical these days. Pretty much no one has a clue what they are talking about anymore in politics. Can you be specific about a position you think I take that is not what a liberal D would take?

                  Ben, more of your never ending nonsense.

              4. 2.3.3.1.1.2.4

                The reason why I don’t think this was your most unhinged comment is because I think asserting that a federal apellate judge has a personality disorder is even more unhinged. Alternatively, asserting that an anonymous commenter here is a child harmer is even more unhinged.

                1. Ben >>Alternatively, asserting that an anonymous commenter here is a child harmer is even more unhinged.

                  I have never done this.

                  >>personality disorder

                  What I’ve said is based on personal interactions with said person and many comments from people that worked with her. And, more specifically, what I said was that if there had been a true vetting process for her rather than a quick confirmation that she would not have been able to pass the vetting process because of her personality disorders. And that was the thrust of what I was saying.

                  More of the paid blogger Ben coming after me.

                  Gee isn’t it funny the way the anti-patent judicial activists put an enormous effort into trying to defame me. I wonder why? Could be my positions for strong patents? I think so.

                2. “I have never done this.”

                  False. You asserted that MM–scourge that he was (is?)–was a child harmer. No link because the comments were deleted, presumably due to the extremely bad taste.

                  “What I’ve said is based on personal interactions with said person and many comments from people that worked with her.”

                  Did you get your PhD in psychology before or after you became a patent attorney?

                  “Gee isn’t it funny the way the anti-patent judicial activists put an enormous effort into trying to defame me. I wonder why?”

                  I’m only saying something because you attacked me for my extremely mild comment. Since you presumably do not think that Ordinary is correct that this was your most unhinged post, you are attacking me over something we agree on.

                3. Ben >>“I have never done this.” False. You asserted that MM–scourge that he was (is?)–was a child harmer. No link because the comments were deleted, presumably due to the extremely bad taste.

                  This is a complete lie Ben. In fact, it is typical of your kind where you are accusing me of what MM was doing to me. A complete lie from you Ben. And, in fact, it was probably the reason MM was banned.

                  Ben, you mendacity is stunning.

                4. Ben >>“I have never done this.” False. You asserted that MM–scourge that he was (is?)–was a child harmer. No link because the comments were deleted, presumably due to the extremely bad taste.

                  This is a complete lie Ben. In fact, it is typical of your kind where you are accusing me of what MM was doing to me. A complete lie from you Ben. And, in fact, it was probably the reason MM was banned.

                  Ben, you mendacity is stunning.

                5. Ben >>Did you get your PhD in psychology before or after you became a patent attorney?

                  I’ve always made it clear that it is my opinion based on first hand experience with her, a public figure.

                  Nothing wrong with what I am doing. And you just conveniently skip the point I’ve made over and over again that I don’t think she would have been confirmed had their been a real vetting of her.

                  Just more nonsense from you.

        2. 2.3.3.2

          The statement was making a prediction, not laying down a rule or proclamation. Tough crowd. Do you even disagree with the prediction?

          1. 2.3.3.2.1

            What was your prediction?

            And better yet, what is the reasonable legal basis undergirding your prediction?

            (note that this is the second time on your ‘point’ that I am asking you to clarify what it is that you think that you are saying)

            Let me also throw in there that I predict that a broken analog clock will be correct twice a day.

            Do you disagree with that prediction?
            Can you figure out just why your statement amounts to nonsense? This is not about the crowd ‘being tough.’ This is about removing all the dissembling and obfuscating nonsense and getting to the very real legal issues in regards to the current mess of jurisprudence that we have.

            1. 2.3.3.2.1.1

              The prediction was that: “[i]f the inventive aspect of your claim is not technical in nature, then you are probably going to have a problem regardless of the panel.”

              I will ask you the same thing I asked several others who were bothered by this comment: do you even disagree with this prediction?

              You, and others, seem to want to contest whether this *should* be true. I have expressed no opinion regarding whether this should be the case, I am simply noting that it generally appears to be the case.

              1. 2.3.3.2.1.1.1

                You will ask me — and I will point out that I have already asked you a question directly in point to your question that you need to answer before I can answer your question.

                1. Yes; a stopped clock is right twice a day. I guess you needed to see it typed out?

                  I’m not really invested here. It was largely rhetorical anyway. We both know that you actually would agree.

                2. We both know that your lack of “being invested here” is part of the problem, as you continue to post nonsense instead of diving down to the deeper layers of what is wrong.

                  IF you think that somehow it is I that needs to see you type out the answer that a stopped clock is correct twice a day, then you are even duller than I had imagined.

                  Wake the F up son.

                3. …and then go back and read my actual questions to you to see that you have not bothered to answer all of them.

                  Try again:

                  What is that you mean by “technical,” and where do I find a reference to this in the patent law as written by Congress (as opposed, say, to some law of some foreign sovereign)?

                  And better yet, what is the reasonable legal basis undergirding your prediction?

                  By the way – these were clearly NOT rhetorical.

              2. 2.3.3.2.1.1.2

                Further, not recognizing that ‘the scoreboard is broken’ but only wanting to ask what does the scoreboard say IS very much part of the problem.

      4. 2.3.4

        The strawman position “that inventions involving software shouldn’t be patent eligible” has never been espoused by any member of the Federal Circuit so far as I am aware.
        Then you aren’t particularly aware.

        In Mayer’s concurrence in Intellectual Ventures I LLc v. Symantec Corp., 838 F. 3d 1307, 1322 (Fed. Cir. 2016), he wrote “claims directed to software implemented on a generic computer are categorically not eligible for patent.”

        Also, you aren’t particularly aware as to how judges work when they look to change the law. The worst thing the anti-software patent side could do is issue a decision that categorically bans software. The result of such a decision would be: (i) an immediate trip to the Supreme Court who likely won’t endorse such an extreme version based upon their own prior precedence, (ii) the layoff off of thousands of USPTO examiners (why examine a software when you can just rubber stamp it with a 101 rejection?), and (iii) likely action by the Congress (based upon (i) and (ii) as to 101. The better approach (if killing software patents is your thing) is to slowly create a jurisprudence that can be used to kill any software patent. Using guilty by association/analogy, one technology that is similar to another technology (previously-declared patent ineligible) will also be deemed to be directed to patent ineligible technology. This ‘analogy creep’ can get used over and over and over again such that the latest technology declared patent ineligible has nothing in common with the original technology that was declared as patent ineligible.

        By some measures, some 64% of US Patents in 2021 were software-related. Given the continued importance of this technology and the rate by which the Federal Circuit’s anti-patent 101 jurisprudence has been expanding, I would suspect that 3 out of every 4 patents issued 5 years from now will face invalidation at the Federal Circuit.

        One might ask, why are these patents being issued in the first place? The reason is that the USPTO has put together guidelines in an attempt to interpret the Federal Circuit’s jurisprudence, and based upon those guidelines, these patents are being issued. However, the guidelines are months away from being 3 years old and have been rendered obsolete by a bevy of new Federal Circuit decisions. There is simply no way that the USPTO can keep up with the new case law constantly being issued by the Federal Circuit — this on a statute that has been essentially unchanged in 70 years.

        If the inventive aspect of your claim is technical in nature
        Where is this found in 35 USC 101 again? Where is this found in the Supreme Court’s jurisprudence? Oh wait it isn’t — it is part of the mumbo-jumbo I referred to above. What is the “inventive aspect”? Based upon the Supreme Court decision of Diamond v. Diehr, the “claims must be considered as a whole,” which was subsequently followed by the admonition that “it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.” Were you aware of this Supreme Court case law? Your comment suggests otherwise.

        Don’t feel bad, the Federal Circuit seems to have forgotten that as well. When a method of tuning a propeller shaft becomes a recitation of Hooke’s law in American Axle, then “technical in nature” or the claimed invention as a whole doesn’t mean a d_mn thing. Look at Yanbin v. Zu. The claimed invention was directed to an improved digital camera with two image sensors, two lenses, and a digital image process that “produc[es] a resultant digital image from said first digital image enhanced with said second digital image.” Judge Prost declared the invention to be “directed to the abstract idea of taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way.” Taking two pictures is a technical process. Enhancing one picture with another one is a technical process. This is utter nonsense. As it turns out, Judge Newman pointed out Diamond v. Diehr in her dissent. She also wrote:
        In the current state of Section 101 jurisprudence, inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce. Although today’s Section 101 uncertainties have arisen primarily in the biological and computer-implemented technologies, all fields are affected. The case before us enlarges this instability in all fields … The digital camera described and claimed in the ’289 patent is a mechanical/electronic device that easily fits the standard subject matter eligibility criteria.

        then you have a great chance at a good result regardless of the panel
        You aren’t really aware of how 101 decisions have been going down at the Federal Circuit recently, have you? Again, look at the Yanbin case I just referenced above.

        1. 2.3.4.1

          Bryan reminded me about Judge Mayer’s concurrence in Symantec above, and I am happy to plead mea culpa there. I had completely forgotten about that. I do not think that is a widely held position, but I obviously could be wrong on that. (Notably, there is some separation between “inventions involving software” and “claims directed to software implemented on a generic computer”, but I was not focused on that differentiation and am happy to just admit I was mistaken. When I’m wrong, I’m wrong.)

          The suggestion that “[i]f the inventive aspect of your claim is not technical in nature, then you are probably going to have a problem regardless of the panel” was just an observation, one that I doubt you even disagree with. Many feel that this should not be a deathknell, or even a factor, under the current law. I expressly express no opinion here.

          1. 2.3.4.1.1

            Notably, there is some separation between “inventions involving software” and “claims directed to software implemented on a generic computer”,”

            PLEASE STOP WITH THE NONSENSE

          2. 2.3.4.1.2

            “there is some separation between “inventions involving software” and “claims directed to software implemented on a generic computer””

            The separation of someone having moved the goal posts 10 feet.

            And that’s ignoring how the goal posts had already been moved from “many on the Federal Circuit.”

    4. 2.4

      Yes, but.

      The way I see it, WT, through my rose-coloured spectacles, every panel is striving to adopt the robust, tried and tested EPO line on eligibility, but is more or less clueless how to implement it.

      First, the claimed subject matter must fall within the “useful arts”, otherwise termed “having technical character”. Software, as such, in itself, lacks any technical character.

      Second, only subject matter that is conceivably using technical means to solve a technical problem can credibly fall within the ambit of the term “invention”.

      The Boards of Appeal at the EPO have issued by now, over 30+ years, thousands of unappealable final decisions which explore the meaning of “technical”. The CAFC has only just started to think about it. Hence the confusion, and the cross-talk between panels. A settled line will emerge, given enough time and enough cases.

      1. 2.4.1

        through my rose-coloured spectacles, every panel is striving to adopt the robust, tried and tested EPO line on eligibility
        My suggestion to you is to take off those “rose-coloured spectacles” and see things for what they are — not how you would like them to be. Your opinions would be better received by being based upon facts — not fantasy (as they currently are).

        Your comments are tiresome because they don’t reflect reality. You are an EPO cheerleader for at least 15 years now? Nobody takes a cheerleader seriously. In the USA (where cheerleaders are prevalent), a team can be down 42-7 late in the 4th quarter and the cheerleaders are still pretending that the next play means something. Cheerleaders get tuned out — don’t be a cheerleader.

        A settled line will emerge, given enough time and enough cases.
        You know nothing Jon Snow.

        1. 2.4.1.1

          … and these sentiments — also not new.

        2. 2.4.1.2

          Thanks for the question mark at the end of your sentence about my being a “cheerleader”. My answer to your question is that I don’t see myself as a cheerleader, rather, a dispassionate, privileged and interested observer of the field of play taking place in several jurisdictions (including but not limited to Germany, UK, USA) for approaching fifty years, from my base split between English law and civil law jurisdictions.
          During those fifty years, I have seen much positive progress in patent law and I hope through my rose-tinted spectacles to see more in the next few years.

          The patent community is international. Under the EPC, there are two ongoing schools of thought on eligibility, its Article 52. Need there be a sign of a “contribution” or an “inventive concept” in a claim to confer eligibility on it. The UK Supreme Court firmly says YES, the EPO’s “supreme court” firmly say NO. Each is convinced that the other side’s interpretation of Art 52 EPC is unfortunate and plain wrong. The CAFC cannot avoid the same debate and seems to be struggling with it even as we both observe from the sidelines. Sooner or later, it will also has to come up with a settled view on what (if any) restriction on eligibility is imposed by the category “useful arts”.

          You point out that cheerleaders get tuned out. That may be so, and that’s up to you, and it’s good advice thanks, but even after 15 years I’m still getting here in these threads a gratifyingly high number of polite and well-informed reactions to my posts so I should like to continue with them.

          1. 2.4.1.2.1

            that I don’t see myself as a cheerleader, rather, a dispassionate, privileged and interested observer of the field

            Dunning-Kruger would be an entirely apt reply to what maxDrei “sees himself.”

            The patent community is international.

            For the one who refuses to approach anything with a mind willing to understand, this statement is simply asinine and ignores that fact that patent law was, is, and ever shall be, Sovereign-centric.

            Sooner or later, it will also has to come up with a settled view on what (if any) restriction on eligibility is imposed by the category “useful arts”.

            You ployed your fallacy somewhere else recently on the useful arts and “technical” – this is but yet another instance in which you have rudely ignored reality on this point.

            but even after 15 years I’m still getting here in these threads a gratifyingly high number of polite and well-informed reactions to my posts so I should like to continue with them

            Polite? meh – sooo overrated.
            well-informed? – well if you count “reaction” as including those such as mine that tear your asinine posts to shreds, well, that is not what you appear to want to make it out to be, now is it?

            Do NOT confuse propaganda and those ALSO wanting to diminish strong US innovation protection with ANY sense that what you post is anything but trash.

            Of course YOU will “like to continue” and this would be a true statement regardless of anything else that anyone would — or even could — say to you.

          2. 2.4.1.2.2

            I don’t see myself as a cheerleader, rather, a dispassionate, privileged and interested observer of the field of play taking place in several jurisdictions.
            I fancy myself to be British Royalty — however, I am not. You fancy yourself to be a “dispassionate, privileged and interested observer” — you are not.

            The CAFC cannot avoid the same debate
            The CAFC cares not a whit about what is happening at the EPO.

            1. 2.4.1.2.2.1

              OK then, WT, is it your position that I am not an observer? Or is it that I am not interested? Or perhaps you suppose me to be in no way privileged.

              No, I guess it is none of those, so it must be that it is your perception that I am not dispassionate. But why should that distress you? On this blog, everybody has “an agenda” dont they?

              What you should worry about more is your unfounded and mistaken fancy that you are a member of the British royal family. Not Andrew, I hope.

              But otherwise, l agree with you, that the Judges at the CAFC could not care less about “what is happening at the EPO”. I suspect though that, like patent judges in other jurisdictions, they do care about finding a workable, elegant and rigorous common position on eligibility

              1. 2.4.1.2.2.1.1

                wow MaxDrei – you really have to try hard to miss what Wt is saying so badly.

              2. 2.4.1.2.2.1.2

                is it your position that I am not an observer
                You are far from dispassionate. You are a cheerleader.

                On this blog, everybody has “an agenda” dont they?
                There is a difference between having an opinion and having one’s opinion create facts (e.g., “CAFC cannot avoid the same debate and seems to be struggling with it”) with zero basis.

                I suspect though that, like patent judges in other jurisdictions, they do care about finding a workable, elegant and rigorous common position on eligibility
                No. Everybody has an agenda … including those on the Federal Circuit. Their agenda means more than have a workable, elegant and rigorous common position on eligibility. When you pay attention to who is writing what (at the Federal Circuit), it becomes painfully obvious who has what agenda.

            2. 2.4.1.2.2.2

              “I fancy myself to be British Royalty”

              Knew I smelled a ra cist. And a classist to boot.

      2. 2.4.2

        Software, as such, in itself, lacks any technical character.

        Max, I have spent my day today writing software. Trust me, as an engineer who has been coding since I was a teenager, there is no doubt in my mind that this was a technical activity. I made numerous technical choices in producing about 100 lines of debugged, documented, working code.

        I know for a fact, however, that because of the nature of what my code does (it’s basically a game, but with a more serious purpose) it is not patentable subject matter in Europe. This is not because it lacks any ‘technical character’, but because the EPC expressly excludes ‘software, as such’ from consideration as having technical character. This is a legal fiction that has been adopted in Europe as part of a political compromise.

        It’s not a unreasonable compromise, but let’s not pretend it’s some kind of universal truth.

        1. 2.4.2.1

          As you say, Mark, writing code is rather technical. So too is drafting tax legislation. And creative tax legislation could be very inventive. But is it within the ambit of the Constitution’s “useful arts” and does it solve a problem in technology ? My enthusiasm for a “technical character” enquiry derives from the TRIPS restriction of patentability to a field of “technology”

          1. 2.4.2.1.1

            Fallacy alert:

            But is it within the ambit of the Constitution’s “useful arts” and does it solve a problem in technology ?

            Given also that you refuse to actually define ‘technology,’ all that we are left with here from you is muddled cheerleading.

        2. 2.4.2.2

          Mark,

          Just ask MaxDrei how big of a hole is blown through the prohibitions with the phrases “as such”

          (just remember to ask him ‘politely’)

  4. 1

    First, look who was the attorney for the losing defendant here.
    Second, note that this decision says that: “Duo moved for judgment on the pleadings pursuant to Rule 12(c) of the Federal Rules of Civil Procedure, arguing that .. all claims of the ’903 patent are ineligible under 35 U.S.C. § 101 as the claims are directed to the abstract idea of authentication and do not recite any patent-eligible inventive concept. The district court granted Duo’s motion.” As noted by someone on another blog, that means that the patent specification’s novelty and advantage arguments quoted above were assumed true at that point, but can be challenged with prior art now that this case will go on to trial.
    But, this CosmoKey Solutions v. Duo Security (Fed. Cir. 2021) decision seems likely to be well-cited in the future for Alice avoidance?

    1. 1.1

      But, this CosmoKey Solutions v. Duo Security (Fed. Cir. 2021) decision seems likely to be well-cited in the future for Alice avoidance?
      People said that about McRo, BASCOM, and Berkheimer. It really doesn’t matter for reasons I expressed in comment 2.

      1. 1.1.1

        +1

        Though the result was correct, this is yet one more decision added to the pile of 101 / eligibility analysis jurisIMprudence.

        Congress, where are you?

        SCOTUS, where are you?

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