Written Description Remains an Important Component in Determining Subject Matter Eligibility
U.S. patent law has always recognized the specification as a vitally important component of a patent because it provides the written description of the invention recited in the claims. The specification must meet certain requirements for a patent application to be patentable. For example, the specification must describe the manner and process of making and using the invention. It must also be drafted in such full, clear, concise, and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use the invention.1 While not required by a federal statute or rule, the specification should also describe in detail the specific improvement over known designs including identifying specific features or functions of each embodiment and the advantages each embodiment provides over the old designs. This last point is especially relevant to software-based inventions where the U.S. Patent Office is likely to scrutinize the subject-matter eligibility of the claims under 35 U.S.C. 101 (Section 101). The Federal Circuit’s recent decision in Cooperative Entertainment, Inc. (Cooperative) v. Kollective Technology, Inc. (Kollective), 2021-2167, Fed. Cir. (September 28, 2022) validates the importance of the specification in proving subject matter eligibility for software-based inventions.
Cooperative sued Kollective for infringement of at least claims 1-3 and 5 of U.S. Patent No. 9,432,452 (‘452 patent). Kollective subsequently filed a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) alleging that the claims were patent ineligible under Section 101. Cooperative filed an amended complaint in response to the motion, which Kollective followed with a second motion to dismiss. The U.S. District Court for the Northern District of California granted Kollective’s motion on the grounds that all claims of the ‘452 patent were ineligible under Section 101.
The ‘452 patent is directed to peer-to-peer (P2P) dynamic networks for distributing fields between peers receiving the same content. Independent claim 1 recites a system for virtualized computing peer-based content sharing. The system includes a content delivery server configured for electrical connection and communication via a communications network, and a P2P dynamic network with multiple peer nodes. The peer nodes consume the same content, communicate electronically over the P2P dynamic network, and are distributed outside controlled networks and/or content distribution networks (CDNs) that are included within the communications network. Independent claim 1 further defines the P2P dynamic network as being based on at least one trace route that is used by the delivery server to segment the requested content.
In its amended complaint, Cooperative alleged that claim 1 recites several inventive concepts which the specification touts as specific improvements over the prior art. For example, Cooperative alleged that the claim recites an inventive concept involving a dynamic P2P network that has multiple peer nodes consuming the same content and configured to communicate outside of a CDN. Another alleged inventive concept of the claim allegedly requires that trace routes be used in content segmentation.
The ‘452 patent specification explains how the P2P network structure recited in the claims is different from and improves upon the prior art. The specification makes clear that structural features, such as peer nodes, are located outside of a controlled distribution network and consume the same content. ‘452 patent at col. 3, ll. 35-36.
The specification further contrasts the claimed invention from old systems and methods by stating:
the systems and methods of the present invention…provide more efficient and reduced cost of delivery for the content, as well as optionally providing live streaming for video and/or audio content as well as data, files, analytics, and combinations thereof. The content recipients have a peerness established and/or defined by the common content they are receiving from the CDN server; the systems and methods automatically identify peer nodes receiving common content and create dynamic network communication connection for the peer nodes to transmit that common content to each other, rather than the content being directed from the CDN server directly to each recipient node.2
The ‘452 patent specification also details benefits of increased reliability, more redundancy, and more efficient delivery of content over the prior art, and touts features of a content delivery server which include identifying “the peer nodes for at least one piece of content”, using the identified peer nodes “for the distribution within that dynamic network”, and adding new peer nodes are added for common content with other peer nodes.”3 Use of the peer nodes in this way “provide for redirected content delivery among peer nodes (or users), thereby by-passing any established or static content delivery network (CDN); advantageously, this saves time, improves redundancy, and also reduces or eliminates costs for content delivery over the CDN for the peer nodes.”4 The specification describes other features of the content delivery server which include identifying “those peer nodes that are in close network proximity to each other” and using the identified peer nodes “to distribute content to each other to create more efficient content delivery.”5
The district court reviewed the subject matter eligibility of the clams under the Supreme Court’s two-step framework established in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Under step one of the analysis, the district court found the claims directed to “the abstract idea of the preparation and transmission of content to peers through a computer network.”6 At step two, the district court held that the ‘452 patent merely implemented ‘the abstract idea of preparing and transmitting data over a computer network with generic computer components using conventional technology.’”7
The Federal Circuit found that the district court’s grant of a motion to dismiss on the grounds that the claims are patent ineligible under Section 101 was improper because the ‘452 patent specification and the amended complaint plausibly allege that the claims include inventive concepts sufficient to preclude dismissal of the complaint. The court relied heavily on the specification’s discussion concerning the benefits of the novel techniques and the advantages provided over prior art systems and methods. Specifically, the court held that the district court should have denied the motion to dismiss because Cooperative’s allegations regarding the claims in combination with the ’452 patent’s written description creates a plausible factual issue regarding the inventiveness of the dynamic P2P configuration of claim 1.”8 In its analysis, the Federal Circuit found that claim 1 recites a specific network structure, the written description explains how it is arranged, and the written description and amended complaint explain the alleged benefits of sharing content using a P2P network outside the control of a CDN using peer nodes.”9 The court concluded that claim 1 was not directed to an abstract idea, but rather recites “a specific technical solution that is an inventive concept”, is “not an ‘abstract idea implemented on a generic computer,’” and “is alleged to improve the performance of the content delivery network with reductions in costs and improvements in several aspects of system performance.”10 In addition, the allegations regarding use of the trace routes were found consistent with statements made by applicant in the prosecution history and the patent’s specification.11 The Federal Circuit found that the allegations regarding the use of trace routes in the amended complaint and the discussion in the specification support the segmentation features being a specific technique for improving the functioning of a computer rather than well-understood, routine, or conventional operations which are indicative of an abstract idea.12
The Federal Circuit reversed the district court’s grant of the motion to dismiss and remanded the case for further proceedings. By relying so heavily on the specification and its discussion of the claimed inventive concepts and the benefits and advantages each provides over the prior art, the Federal Circuit demonstrates how important a well-crafted specification is to obtaining and enforcing patent protection for software-related inventions. This decision shows that patent preparation should be a strategic, thoughtful, and reasoned exercise in which the proper scope of invention is captured in the claims and the specification is drafted to clearly and precisely describe the invention and articulate the improvements the invention provides over old systems and the benefits and advantages resulting from the improvements. This practice should result in a patent that can withstand Section 101 scrutiny during examination, post-grant, and litigation proceedings, and can also provide framework for arguments supporting subject matter eligibility to be consistent across all proceedings.
Buchanan IP has a talented bench of attorneys who can assist and advise on subject matter eligibility and other concerns that may arise during patent preparation, prosecution and enforcement. We welcome the opportunity to assist you with your IP related needs and encourage you to contact one of our attorneys for a consultation.
- See 35 U.S.C. 112 and 37 CFR 1.71
- ‘452 patent at col. 7, ll. 29-38.
- Id. at col. 5, ll. 28-48.
- Cooperative at p. 5 (quoting Cooperative Entertainment, Inc. v. Kollective Tech. Inc. 544 F. Supp. 3d 890, 902 (N.D. Cal. 2021))
- Id at 6 quoting (Kollective 544 F. Supp. 3d at 900).
- Id. at p. 10
- Id. at p. 9.
- Id. at p. 13
- Id. at 14.