{"id":1912,"date":"2018-01-10T18:24:42","date_gmt":"2018-01-10T23:24:42","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1912"},"modified":"2018-01-12T13:49:21","modified_gmt":"2018-01-12T18:49:21","slug":"software-innovations-make-non-abstract-improvements-to-computer-technology","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1912","title":{"rendered":"Software Innovations\u00a0Make Non-Abstract Improvements to Computer Technology"},"content":{"rendered":"

In Finjan, Inc., v. Blue Coat Systems, Inc.<\/a>, [2016-2520] (January 10, 2018), the Federal Circuit affirmed\u00a0subject matter\u00a0eligibility of\u00a0U.S.\u00a0Patent No. 6,154,844; affirmed infringement of the U.S.\u00a0Patent Nos. 6,154,844 and 7,418,731;\u00a0 affirmed the award of damages of $ 6 million for U.S.\u00a0Patent No. 7,418,731 and $1.6 million for U.S. Patent No. 7,647,633,\u00a0 reversed the denial of JMOL of non-infringement of U.S. Patent No.\u00a0\u00a06,965,968 and vacated the corresponding damage award.<\/p>\n

Regarding subject matter\u00a0eligibility of\u00a0U.S.\u00a0Patent No. 6,154,844, the Federal Circuit started at Step 1 of the Alice test, finding that the \u2019844 patent is directed to a method of providing\u00a0computer security by scanning a downloadable and attaching\u00a0the results of that scan to the downloadable itself\u00a0in the form of a \u201csecurity profile.\u201d\u00a0 While the Federal Circuit noted that in Intellectual Ventures I LLC v. Symantec\u00a0Corp. it held that virus screening is well-known and constitutes an abstract idea, the Federal Circuit said that in the present case “the claimed method does a good deal more.”\u00a0\u00a0The Federal Circuit framed the question as “whether
\nthis behavior-based virus scan in the \u2019844 patent constitutes\u00a0an improvement in computer functionality,” and found that it does.\u00a0 The Federal Circuit said that its cases confirm that software-based innovations\u00a0can make \u201cnon-abstract improvements to computer technology\u201d\u00a0and be deemed patent-eligible subject matter at
\nstep 1.<\/p>\n

The Federal Circuit also rejected the challenge that even if the claimed idea is new, it is still abstract, noting\u00a0that the claims recite more than a mere result. Instead, the Federal Circuit found that they recite specific steps\u2014generating a security\u00a0profile that identifies suspicious code and linking it to a\u00a0downloadable\u2014that accomplish the desired result.<\/p>\n

Regarding infringement of\u00a0the \u2019844 and \u2019731 patents, the Federal Circuit found that the JMOL of non-infringement for the first time raised issues of claim construction, which it cannot do:\u00a0\u201cit is too late\u00a0at the JMOL stage to argue for or adopt a new and more\u00a0detailed interpretation of the claim language and test the\u00a0jury verdict by that new and more detailed interpretation.\u201d The Federal Circuit found the verdict of infringement of these patent was supported by substantial evidence.\u00a0 Regarding the ‘968 the Federal Circuit agreed with the defendant that the patentee failed to introduce substantial evidence of infringement.<\/p>\n

Regarding damages for infringement of\u00a0the \u2019844 patent, the Federal Circuit agreed that the patentee failed to apportion damages to the infringing\u00a0functionality, stating that “[w]hen the accused technology does not make up the\u00a0whole of the accused product, apportionment is required.”\u00a0 The Federal Circuit said that\u00a0the patentee must give evidence
\ntending to separate or apportion the infringer’s\u00a0profits and the patentee’s damages between the patented\u00a0feature and the unpatented features, and such evidence\u00a0must be reliable and tangible, and not conjectural or
\nspeculative.\u00a0 The patentee argued that it based the royalty on the\u00a0\u201csmallest, identifiable technical\u00a0component\u201d but the Federal Circuit held that this does not insulate them from the essential\u00a0requirement that the ultimate reasonable royalty award\u00a0must be based on the incremental value that the patented\u00a0invention adds to the end product.\u00a0 Noting that\u00a0reversal of the denial of\u00a0JMOL could result in a situation in which Finjan receives\u00a0no compensation for Blue Coat\u2019s infringement of the \u2019844\u00a0patent, the Federal Circuit remanded to the district court to determine\u00a0whether Finjan has waived the right to establish reasonable\u00a0royalty damages under a new theory and whether to\u00a0order a new trial on damages.\u00a0 This aspect of the decision caused the district judge in the middle of a trial relating to the same patent to declare a mistrial, and reschedule the infringement and damages cases.<\/p>\n

Regarding damages for infringement of\u00a0the\u00a0\u2019731 and \u2019633 patents, the Federal Circuit held that the awards were supported by substantial, if conflicting, evidence.<\/p>\n

This is a rare Step 1 victory for a software inventor, and although the decision will no doubt be cited by hopeful applicants and patent owners, it does not bring any clarity to what it means to claim an abstract idea.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Finjan, Inc., v. Blue Coat Systems, Inc., [2016-2520] (January 10, 2018), the Federal Circuit affirmed\u00a0subject matter\u00a0eligibility of\u00a0U.S.\u00a0Patent No. 6,154,844; affirmed infringement of the U.S.\u00a0Patent Nos. 6,154,844 and 7,418,731;\u00a0 affirmed the award of damages of $ 6 million for U.S.\u00a0Patent … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[15,48,16],"tags":[],"class_list":["post-1912","post","type-post","status-publish","format-standard","hentry","category-15","category-damages","category-infringement"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1912","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1912"}],"version-history":[{"count":4,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1912\/revisions"}],"predecessor-version":[{"id":1918,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1912\/revisions\/1918"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1912"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1912"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1912"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}