We haven't been posting much about § 101 lately. That's largely because things have leveled out a bit. Everyone basically knows the drill at this point.
But it was still great to read Judge Bryson's opinion in KOM Software Inc. v. NetApp, Inc., C.A. No. 18-160-WCB (D. Del. Oct. 4, 2023).
In it, Judge Bryson tackled two separate patents, both challenged on § 101 grounds. Both patent specifications were directed to the same invention, but the claims differed widely. Judge Bryson easily found one abstract and one not, illustrating the difference.
Both patents' specification involve the very-technical subject matter of a software "trap layer" that blocks certain kinds of commands from reaching a device in a computer, such as a disk drive, without generating errors. The trap layer could allow the user to "read" and "write" to files on the disk, for example, but not to "delete" them.
Pretty technical, right? Absolutely. So why was one held to be ineligible? Good question.
The first patent just straight-up claimed a "trap layer" and its functions, and Judge Bryson easily found that that patent was not directed to an abstract idea under step one of Alice:
The trap layer is expressly recited in the asserted claims of the ’243 patent. For example, the system recited in claim 69 requires, inter alia, a “computer processor configured to intercept, by at least one computer file system trap layer . . . an attempted operation on said at least a portion of the computer storage medium.” . . . .
Put simply, the claims of the ’243 patent recite the use of a trap layer, which the specification of that patent discloses as the principal means for solving the problems associated with prior art storage devices. Thus, the claims are plainly “directed to an improvement in the functioning of a computer,” . . . and not to an “independently abstract” process that merely invokes computers as a tool . . . .
He went on to address—and knock down—several Federal Circuit cases raised by the defendant.
But the story was very different for the second patent. Rather than claiming the "trap layer," that patent claimed the result of the trap layer:
Stripped of their technical jargon, [the] steps [of the second patent] can be restated as follows: (1) providing an indication that one or more file operations is not permitted on a particular storage medium; and (2) restricting access to each file based on that indication, while still allowing access to the free space on that storage medium.
It is immediately apparent that those claims are much broader than the claims of the ’243 patent. Rather than limiting the claims to the specific “trap layer” disclosed in the specification, the claims cover essentially any method of restricting access to a storage device based on particular operations that are not permitted to be performed on the device. When claims “broadly recite generic steps and results—as opposed to a specific solution to a technological problem,” the claims are more likely to be directed to an abstract idea. . . . And the asserted claims of the ’864 patent simply describe a desired result, not a method of achieving it.
The Court held that the claims were ineligible.
It went on to compare the claims under Federal Circuit precedent, noting that the analysis comes out the opposite way for the second patent:
The two questions articulated by the [Federal Circuit] in TecSec, . . . provide a useful vehicle for comparing the asserted claims of the [first] ’864 patent to the asserted claims of the [second] ’243 patent. [Both sets of claims] provide a positive answer to the first question—whether the claims focus on “a problem specifically arising in the realm of computer networks.” See TecSec, 978 F.3d at 1293 (cleaned up). The second question, however, has a different answer. Unlike the claims of the ’243 patent, the claims of the ’864 patent are directed to a “desirable result or function,” not to a “‘specific’ improvement in computer capabilities or network functionality.” See id. at 1293 (citation omitted). Although the specification of the ’864 patent describes the same “trap layer” that is recited in the claims of the ’243 patent, the detail described in the specification is lacking in the claims. And as the Federal Circuit has made clear, the section 101 analysis focuses on the claims, rather than what is described in the specification.
(The Court briefly addressed Step 2 of Alice, primarily to note that the patentee hadn't adequately articulated its Step 2 arguments).
Basically, the first patent claimed the solution, described in functional terms, and the second patent claimed the result, also described in functional terms. The first was fine; the second was directed to an abstract idea.
In other words, functional language alone isn't the problem. Both patents had functional language. The problem was that the second patent didn't claim the solution the patentee actually invented. Instead, it tried to claim the result, and the Court held it abstract.
Did This Only Work Because There Were Two Different Patents?
The contrast between the claims of the two patents was clear. One plainly claimed the actual invention; the other plainly claimed the result / functions of that invention.
I have to wonder—did this work because of the two starkly-contrasting sets of claims? If a court was presented with just the second patent, would it have been as easy to tell that it was claiming the result rather than the actual invention?
It's hard to say. But I think this opinion could be a useful example going forward of the difference between a patent-eligible claim to an actual invention and a patent-ineligible claim to the result of an invention.
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