The Federal Circuit has continued to make rulings favorable to software patent owners in cases in which the basic eligibility of the claims for patenting has been disputed. A case decided recently is
Finjan, Inc. v. Blue Coat Systems, Inc.
, ___ F.3d ___ No. 2016-2520 (Fed. Cir. slip op. January 10, 2018). The plaintiff Finjan owns patented technology used in enterprise web security solutions. The defendant is Blue Coat Systems, which provides hardware, software, and services designed for cybersecurity and network management. Finjan and Blue Coat compete directly in providing anti-virus and anti-malware screening software to companies of all sizes.
The disputed Claim 1 of
U.S. Patent 6,154,844
relates to malware screening of downloaded files. The claim has relatively broad scope, reciting a computer-based method of identifying suspicious code from a downloaded executable program, writing the identification result into a security profile, and linking the security profile with the executable program before making the executable program available to a client. Examples of the “suspicious code” given in the specification include code for performing suspicious operations, such as removing a file or exiting a window.
In 2013, Finjan brought suit against Blue Coat in the Northern District of California for infringement of patents owned by Finjan. After a trial, the jury found that Blue Coat infringed the ‘844 patent and 3 other patents. After a bench trial, Judge Freeman concluded that the ‘844 patent was directed to patent-eligible subject matter. In 2016, Blue Coat appealed. Judges Dyk, Linn, and Hughes of the Federal Circuit found no error in the district court’s subject matter eligibility determination.
In determining whether the claims in the ‘844 patent passed step one of the
Alice-Mayo
framework, the Federal Circuit ruled that the claims were not directed to an abstract idea because the claimed technology provided something better than the conventional anti-virus technique of code matching. Specifically, the court stated that the claimed technology was better because it enabled protection against previously unknown viruses or obfuscated code as well as more flexible and nuanced virus filtering. In addition, the court observed that the claim recited how to generate new and useful data. The court thus concluded that the claims recited patent-eligible subject matter and there was no need to proceed to step two of the
Alice-Mayo
framework.
The rulings of the case appear to demonstrate a continuous effort to conduct a critical review of computer-based patent applications and provide patent practitioners with some tools for properly preparing and prosecuting such patent applications to satisfy the eligibility and patentability requirements. It would be helpful to claim how to accomplish a desired result and to demonstrate how the claimed technology is better than or at least different from existing technology. The automatic generation of something not generated by a computer before can be tied to subject matter eligibility.
