File-Searching Software Patent Found to be Patent Eligible
Speedtrack sued Amazon for patent infringement of U.S. Patent No. 5,544,360 in the United States District Court for the Northern District of California. Amazon filed a motion to dismiss alleging that the '360 patent was invalid under 35 U.S.C. § 101 for lack of patent eligible subject matter. The Court denied Amazon's motion to dismiss, and found the patent, which is directed generally to software for accessing stored data files, to not be directed to any abstract idea.
Patent Eligibility
Initially, the Court addressed whether the challenge under Section 101 at the motion to dismiss stage, prior to conducting claim construction, was proper. The Court quickly indicated that where, as here, the basic character of the claimed subject matter is readily ascertainable from the face of the patent, the Court found that it may determine patentability at the motion to dismiss stage.
For patent eligibility, the analysis, generally known as the Alice framework, follows a two-step test for distinguishing patents that claim laws of nature, natural phenomenon, and abstract ideas from those that claim patent eligible applications of those concepts. First, courts must determine whether the claims at issue are directed to a patent ineligible concept, such as an abstract idea. If the claims are not directed to an abstract or otherwise patent ineligible idea, the claims are considered patentable and the inquiry ends. If, however, the court finds the claims are in fact directed to ineligible or abstract ideas, the court must consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent eligible claim.
It is clear that neither the Supreme Court nor the Federal Circuit has established a definitive rule to determine what constitutes an abstract idea sufficient to satisfy the first step of the Mayo/Alice inquiry. Rather, instead of setting forth a bright line test separating abstract ideas from concepts that are sufficiently concrete so as to require no further inquiry under the first step of the Alice framework, courts are tasked with making the evaluation whether any particular claims are directed to a patent ineligible abstract idea by comparing claims at issue to those already found to be directed to an abstract idea in previous cases.
In the context of computer-implemented inventions, courts have considered whether the claims purport to improve the functioning of the computer itself, which may suggest that the claims are not abstract, or instead whether computers are invoked merely as a tool to carry out an abstract process.
Turning to the '360 patent, it describes a computer file control system that includes a File Category Table (FCT) and a File Information Directory (FID) to store information about user-defined categories and information linking such categories to specific files. The invention uses the information stored in the FCT and FID to quickly and easily access files in the file system. The invention includes a graphical user interface for defining categories, associating files with particular categories, and defining search filters.
In the process of search and retrieval, the invention overcomes the problem of search filter definition, ensuring that the user defines a filter which will always find at least one file, thus avoiding wasting time in searching for data that cannot be matched. This is achieved in two ways. First, the user is not required to type the key words to search; instead, the user simply chooses the words in random order from pick lists, making mistyping impossible. Second, as the user builds the search filter definition, categories which would find no data are automatically excluded as pick list possibilities.
Claim 1 of the '360 patent recites:
1. A method for accessing files in a data storage system of a computer system having means for reading and writing data from the data storage system, displaying information, and accepting user input, the method comprising the steps of:
(a) initially creating in the computer system a category description table containing a plurality of category descriptions, each category description comprising a descriptive name, the category descriptions having no predefined hierarchical relationship with such list or each other;
(b) thereafter creating in the computer system a file information directory comprising at least one entry corresponding to a file on the data storage system, each entry comprising at least a unique file identifier for the corresponding file, and a set of category descriptions selected from the category description table; and
(c) thereafter creating in the computer system a search filter comprising a set of category descriptions, wherein for each category description in the search filter there is guaranteed to be at least one entry in the file information directory having a set of category descriptions matching the set of category descriptions of the search filter.
With respect to the '360 patent, the Court found that the claimed invention is not merely an abstract idea, but rather it claims an improved method for accessing files in a data storage system of a computer system. The Court found that the invention solved a challenge in which a search in a hierarchical directory structure did not guarantee a result. Here, the invention addressed that concern with the mechanism of allowing the user to search only those terms that are actually contained in the file description, thereby eliminating the possibility that the user may mistype or misspell a search term. The claimed invention seeks to remedy the problem by ensuring that the user is guaranteed a search result because (1) the user is not required to type the key words to search; instead the user simply chooses the words from pick lists, making mistyping impossible; and (2) as the user builds the search filter definition, categories which would find no data are automatically excluded as pick list possibilities.
Thus, the Court found this to be an improvement in the context of computer capabilities when accessing files stored in a computer data storage device that both guarantees a search result and makes mistyping impossible.
As a result, the Court found that the '360 patent is not directed to an abstract idea. Because the Court found that the present invention is not directed to an abstract idea, but rather is directed to a specific improvement in the way computers operate, the Court did not need to address whether the claims contain a limiting inventive concept. But the Court further noted that the claims here recite specific implementation of a system of retrieving and accessing files stored in a computer storage device, using the combination of a "category description table," a "file information directory," and a "search filter" which, in combination, guarantees a search result and makes mistyping impossible. The Court found that this recited an improvement in computer technology, and would satisfy step two.
As a result, the Court found that the claims are not directed to an abstract or ineligible idea, and thus, the claimed system is patent-eligible under Section 101. Thus, the Court denied the motion to dismiss the complaint.
A positive result here for patentees, in that a software patent was found to be patent eligible. The key here seems to be that the claims were characterized as an improved method that solved a challenge of prior art file retrieval processes. This further enabled the Court to state that the invention was an improvement in the context of computer capabilities. Such techniques may be useful for patentees to build these types of description into the patent application itself to put the patentee in a better position to withstand any section 101 challenges.
Order Denying Motion to Dismiss by District Judge Jeffrey S. White
