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Abstract Idea Analysis not Always so Concrete

A divided panel of the US Court of Appeals for the Federal Circuit affirmed the district court, finding that a claimed method for monitoring and analyzing a computer network was directed to an improvement in computer capability, not an abstract idea, and was thus patent eligible. SRI International, Inc. v. Cisco Systems, Inc., Case No. 17-2223 (Fed. Cir. Mar. 20, 2019) (Stoll, J) (Lourie, J, dissenting).

After SRI sued Cisco for infringement of two patents, Cisco sought summary judgment that the asserted claims were not patent eligible, a motion that the district court denied. Cisco appealed.

Applying the two-step Alice test, the Federal Circuit explained that the claims were not directed to an abstract idea under step one. Instead, the invention was directed to “using a specific technique—using a plurality of network monitors that each analyze specific types of data on the network and integrating reports from the monitors––to solve a technological problem arising in computer networks: identifying hackers or potential intruders into the network.” Citing Enfish, the Court majority explained that the claimed technology provides a network defense system that monitors network traffic in real time to automatically detect large-scale attacks, thus providing a “specific asserted improvement in computer capabilities.” To further explain why the invention was not abstract (and in response to the dissent), the majority noted that the patent specification taught that the invention solved weaknesses found in conventional networks and provided “a framework for the recognition of more global threats to interdomain connectivity, including coordinated attempts to infiltrate or destroy connectivity across an entire network enterprise.”

Cisco asserted that the claims were directed to generic steps for collecting and analyzing data, and thus were analogous to those at issue in Electric Power Group v. Alstom. The Federal Circuit noted that the claims in Electric Power Group were drawn to “using computers as tools to solve a power grid problem,” in contrast to the claims at issue, which were drawn to “improving the functionality of computers and computer networks themselves.” The Court majority analogized the claims at issue to those in DDR Holdings, noting that the “claimed technology ‘overrides the routine and conventional sequence of events’ by detecting suspicious network activity, generating reports of suspicious activity, and receiving and integrating the reports using one or more hierarchical monitors.”

In response to Cisco’s argument that the claimed technology does not involve “an improvement to computer functionality itself,” the Federal Circuit explained that the challenged claims are not directed to using a computer as a tool, but instead are directed to improving the technical functionality of the computer and computer networks by reciting a specific technique for improving computer network security.

Further, in rejecting Cisco’s argument that the claims were directed to an abstract idea because the claimed technology could be performed by mental processes, the Federal Circuit noted that the human mind cannot detect suspicious activity by using network monitors and analyzing network packets as recited in the claims.

Judge Lourie dissented, arguing that the claims were directed to an abstract idea. Specifically, Judge Lourie would have found, under Alice step one, that the claims were analogous to those considered in Electric Power Group and failed to recite a specific way of enabling a computer to monitor network activity. In Lourie’s view, the claims were directed to the abstract idea of monitoring network security. Unlike the majority (which never addressed Alice step two), Judge Lourie would have found under step two of Alice that the specification explained that the claims only relied on generic computer components. Thus Lourie would have concluded that the claims were directed to an abstract idea, did not recite an inventive concept and therefore should have been found to be patent ineligible.

Practice Note: In a recent address before the American Bar Association Intellectual Property Law Conference, US Patent and Trademark Office Director Andrei Iancu remarked that the en banc Federal Circuit could take on a few § 101 eligibility cases, in tech and life sciences, and “hash this out,” noting that “[i]t’s not brain surgery. It’s a solvable issue.”

© 2019 McDermott Will & Emery

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