Federal Circuit remands for an Alice step two determination
The Fed. Cir. today remanded a patentable subject matter case under 35 U.S.C. § 101 to the district court for an Alice step-two analysis in Trustees of Columbia Univ. v. Gen Digital. I’ve been writing about how there is a split at the Fed. Cir. on whether conventionality is used at step one. Well, in this case, it was, whereas in Powerblock, the court held that conventionality is not used at step one.
The technology involves virus checking software that compares a program’s emulation to how the program is expected to perform via a “model of function calls.” The court reversed the district court’s finding that the claims were not directed to an abstract idea at step one. The court stated, as it frequently does, “step one ‘often turns on whether the claims focus on “the specific improvement in computer capabilities”‘ rather than ‘an “abstract idea” for which computers are merely invoked as a tool.'” Then, the court warned that “claims that recite something ‘already routine and conventional’ are not sufficient.'” (citing GoTV) And the court further stated, “the use of ‘conventional or generic technology’ cannot alone constitute a technological improvement.” The court continued: “‘[b]y itself, virus screening is well-known and constitutes an abstract idea.'” The court therefore held that a claim that “‘does not claim a new method of virus screening or improvements thereto’ and does not ‘improve or change the way a computer functions’ is directed to an abstract idea.” The patent owner had to concede that “emulators were conventional technology and that a divide-and-conquer approach where multiple computers collaborate on a single task is an abstract idea.” The court therefore found that any efficiency gain is “no more than this concededly abstract idea.” The court dismissed patent owner’s other step-one, technological-improvement arguments because they were unclaimed.
At step two, the court remanded for a factual determination on whether the “model of function calls” was conventional.