The U.S. Court of Appeals for the Federal Circuit recently issued the decision of Simio, LLC. V. FlexSim Software Products, Inc. (Dec. 29, 2020). In upholding the District Court’s decision that the software claims at issue were patent ineligible under 35 U.S.C. § 101, the Federal Circuit found that improving a user experience does not constitute an improvement to technology under Step 1 of the patent eligibility test enunciated in Alice, and that the specification’s “focus” is taken into account when determining whether a claim is “directed to” an abstract idea under Step 1 of Alice. This case highlights the need for a well-planned specification that anticipates a patent eligibility analysis and has a general focus on technical improvements, particularly directed to improved computer functionality for software and computer science patent applications.
The patent at issue in the Simio case, U.S. Patent No. 8,156,468, deals with methods for building computer simulations through the use of graphics, as opposed to conventional computer programming techniques. Illustrative independent claim 1 is below:
- A computer-based system for developing simulation models on a physical computing device, the system comprising:
- one or more graphical processes;
- one or more base objects created from the one or more graphical processes;
- wherein a new object is created from a base object of the one or more base objects by a user by assigning the one or more graphical processes to the base object of the one or more base objects;
- wherein the new object is implemented in a three-tier structure comprising:
- an object definition, wherein the object definition includes a behavior;
- one or more object instances related to the object definition; and
- one or more object realizations related to the one or more object instances;
- wherein the behavior of the object definition is shared by the one or more object instances and the one or more object realizations; and
- an executable process to add a new behavior directly to an object instance of the one or more object instances without changing the object definition and the added new behavior is executed only for that one instance of the object.
Simio sued FlexSim in the US District Court for the District of Utah, alleging infringement of the ‘468 patent. The District Court held that claim 1 of the ‘468 patent was subject matter ineligible and subsequently dismissed the action. Simio appealed to the Federal Circuit Court of Appeals, where the patent eligibility of claim 1 was reviewed de novo.
The Federal Circuit analyzed claim 1 under the two-step framework for patent subject matter eligibility set forth in Alice Corp. Pty. Ltd. V. CLS Bank International, 573 U.S. 208 (2014). The Alice framework requires: (1) the determination of what the patent asserts to be the focus of the claimed advance over the prior art (citing Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161); and (2) consideration of the elements of the claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application (citing Alice at 217).
The Federal Circuit determined that claim 1 failed both steps of the Alice framework. In particular, the Federal Circuit found that the focus of claim 1 is directed to the idea of using graphics instead of using programming to create object-oriented simulations (“maybe a new idea, but still an abstract one”).
Simio argued, in part, that the features of claim 1 improve a computer’s functionality by improving computer-implemented simulations. The Federal Circuit disagreed, holding that the improvement was not to the computer’s functionality, but rather to a user’s experience (e.g., not having to program in order to generate simulations). Citing Trading Techs. Int’l, Inc. v. IBG LLC (921 F.3d 1084, 1092-93 (Fed. Cir. 2019)), and Customedia Techs., LLC v. Dish Network Corp. (951 F.3d 1359 (2020)), the Federal Circuit declared that “improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality.”
Simio further argued that the “executable-process” feature of claim 1 reflects an improvement to computer functionality. The Federal Circuit reviewed the ‘468 patent’s specification and concluded the “character” of claim 1 is directed towards an abstract idea. Of note, the Court states “[i]n stark contrast to its heavy focus on the abstract idea of using graphics instead of programming to create object-oriented simulations, the specification dedicates relatively little attention to the functionality reflected in the executable process limitation.”
The Federal Circuit determined also that claim 1 fails Step 2 of the Alice framework; however, the most impactful aspect of the decision is the Step 1 analysis. The Court’s holding expands the “user improvement” analysis used in Trading Techs into the field of computer simulations. It is not difficult to envision federal courts expanding this analysis more broadly into the computer arts in the future.
Further, the Federal Circuit performed a “deep dive” into the specification of the ‘468 patent to determine the focus or character of the features of claim 1. The Court looked at both the “quality and the quantity” of the specification and determined that the focus of claim 1 is the abstract idea, and not the improvements provided by the “executable process” feature, as argued by Simio.
It is important that applicants take these findings into account when drafting specifications, particularly for those applications within the computer arts. Almost all patent applications in the computer arts improve a user experience in some manner. It is critical to focus, in the specification, on improvements to computer functionality rather than merely on the enhanced user experience for inventions in the computer arts. Attention should be given to subject matter eligibility at the time of drafting so that the “general focus” of the specification leans more towards the improvement to computer functionality than to the enhanced user experience. This strategy might include devoting a section of the specification to technical advantages where these improvement are spelled out clearly, and then referring back to that section when describing the user experience. Cherry-picking seemingly supportive language from the specification in support of technological improvement arguments, when that language is relatively insignificant to the specification when viewed in its entirety, was rejected by the Simio Court. The entire specification can be looked at by the Court, and the Court can determine a “general” focus from the overall specification. Further, while the Simio claims are directed to computer software, it is reasonable to expect that the analysis used in Simio may well be used by courts for subject matter eligibility determinations for other judicial exceptions as well (e.g., laws of nature and natural phenomena).
