Do you think the Federal Circuit treats “speed” consistently for purposes of §103 and §101? In a §103 rejection, the Federal Circuit seems to discount an inventor’s accomplishment of greater speed via his/her invention. MPEP §2144 (II) relies on the CAFC’s Dystar opinion and states:
II. THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker,702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (“Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.”).
In the §101 cases, however, an invention’s “speed” seems to carry more weight:
Two recent cases inform our evaluation of whether the claims are “directed to” an abstract idea. In Enfish, we held claims reciting a self-referential table for a computer database were patent-eligible under Alice step one because the claims were directed to an improvement in the computer’s functionality. Id. at 1336. We explained that “the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Id. The specification described the benefits of using a self-referential table — faster searching and more effective data storage — and highlighted the differences between the claimed self-referential table and a conventional database structure. Id. at 1333, 1337. Based on this, we rejected the district court’s characterization of the claims as being “directed to the abstract idea of `storing, organizing, and retrieving memory in a logical table.'” Id. at 1337. We emphasized that the key question is “whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an `abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335-36. Moreover, it was appropriate to consider the technological improvement embodied in the claims at step one, we explained, because Alice does not “broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.” Id. at 1335.
| Visual Memory LLC v. Nvidia Corp., 867 F.3d 1253, 1258 (Fed. Cir. 2017)(emphasis added). |
The complaint alleges that the claimed software uses less memory, results in faster processing speed, and reduces the risk of thrashing which makes the computer process forms more efficiently. J.A. 429 ¶ 39. These allegations suggest that the claimed invention is directed to an improvement in the computer technology itself and not directed to generic components performing conventional activities. We have repeatedly held that inventions which are directed to improvements in the functioning and operation of the computer are patent eligible. See, e.g., Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258-59 (Fed. Cir. 2017); Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016); see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Viewed in favor of Aatrix, as the district court must at the Rule 12(b)(6) stage, the complaint alleges that the claimed combination improves the functioning and operation of the 1128*1128 computer itself. These allegations, if accepted as true, contradict the district court’s conclusion that the claimed combination was conventional or routine. J.A. 26. Therefore, it was an abuse of discretion for the district court to deny leave to amend.
Aatrix Software v. Green Shades Software, 882 F.3d 1121, 1127-28 (Fed. Cir. 2018)(emphasis added).
Declaring that software implemented on a generic computer falls outside of section 101 would provide much-needed clarity and consistency in our approach to patent eligibility. It would end the semantic gymnastics of trying to bootstrap software into the patent system by alleging it offers a “specific method of filtering Internet content,” see BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), makes the computer faster, see Enfish, LLC v. 1329*1329Microsoft Corp., 822 F.3d 1327, 1337-39 (Fed. Cir. 2016), or the Internet better,see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014),just to snuggle up to a casual bit of dictum in Alice, 134 S.Ct. at 2359.
Intellectual Ventures I LLc v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016)(Mayer, J., concurring)(emphasis added).
The method claims do not, for example, purport to improve the functioning of the computer itself. See ibid. (“There is no specific or limiting recitation of … improved computer technology …”); Brief for United States as Amicus Curiae 28-30. Nor do they effect an improvement in any other technology or technical field. See, e.g., 2360*2360 Diehr, 450 U.S., at 177-178, 101 S.Ct. 1048.
Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2359 (2014).
This post is more of a musing than a completed thought. However, perhaps someone will take the idea and write further about it.
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Update December 10, 2021:
The Federal Circuit recently treated “speed” as a factor in its §101 analysis in MENTONE SOLUTIONS LLC v. DIGI INTERNATIONAL INC., No. 2021-1202 (Fed. Cir. Nov. 15, 2021):
Through this shifted USF, the invention purports to “reduce restrictions affecting extended dynamic allocation with minimal effect on the existing prescript.” Id. at 2:44-46. It allows the mobile station to “transmit up to its physical slot limit.” Id. at 5:17-18. The present invention increases the capacity of networks to communicate data by allowing the network to use timeslots for transmission which, according to the patent, were not available in the prior art. The result is a system capable of a higher rate of data transmission.
MENTONE SOLUTIONS LLC v. DIGI INTERNATIONAL INC., No. 2021-1202 (Fed. Cir. Nov. 15, 2021)(slip op. at 5-6)(emphasis added).
Like the claim in Packet Intelligence, claim 5 purports to solve a challenge unique to computer networks, or, more specifically, certain mobile stations using extended bandwidth allocation in a network: reducing restrictions to enable additional multislot configurations. It increases the rate of data transmission by enabling the use of timeslots for transmission that were not previously available.
MENTONE SOLUTIONS LLC v. DIGI INTERNATIONAL INC., No. 2021-1202 (Fed. Cir. Nov. 15, 2021)(slip op. at 12)(emphasis added).