Concrete Solution to Computer Problem Is Patent Eligible
Affirming a series of district court rulings, the US Court of Appeals for the Federal Circuit found claims directed to software menus that display a limited subset of commonly used functions—useful in conserving space on small screens—to be patent eligible. Core Wireless Licensing v. LG Electronics, Inc., Case No. 16-2684 (Fed. Cir., Jan. 25, 2018) (Moore, J). The Court also affirmed the district court’s denial of the defendant’s motion for judgment as a matter of law (JMOL) on anticipation, despite the fact that the plaintiff put forward no rebuttal witness on validity.
Core Wireless owns patents directed to software menus useful with applications running on small screens; i.e. menus that display a limited subset of potential functions. These menus allow users to navigate to and access the most commonly used functions without needing to key through a large menu on a small screen. Core Wireless sued LG for infringement of these patents.
LG moved for summary judgment of invalidity, arguing that the patents were ineligible for protection under § 101 because they were directed to the abstract idea of indices. The district court denied summary judgment. After trial, LG also moved for JMOL on anticipation, arguing that a prior art reference taught the use of a small menu to save space on a small screen. LG argued that Core Wireless had not put forward any expert on validity, so there was no evidence on which a reasonable jury could have relied to find that the patents were not anticipated. The district court disagreed and denied the JMOL. LG appealed.
The Federal Circuit affirmed. Addressing the § 101 issue, the Court found that rather than merely reciting indices, the patents claimed a concrete solution to a problem specific to computers, which was lack of screen size and resulting navigational difficulties. The Court analogized these patents to others that offered seemingly abstract solutions to novel issues created by computers that the Court had previously held to be patent eligible.
Turning to the JMOL, the Court noted that not only does the defendant bear the burden of proving anticipation, but it also must do so by means of clear and convincing evidence. The Court explained that JMOL should be granted in only the most extreme cases, such as where an opposing party’s witness makes a key admission. Here, Core Wireless was not required to put forward any affirmative evidence of validity. Instead, Core Wireless properly relied on cross examination of LG’s witness to impeach testimony, including an admission that the prior art reference only taught a list that allowed a user to access every function of the software, rather than the limited list taught by the asserted patents. Thus, the Court found that the jury was entitled not to credit LG’s witness and that LG had not properly carried its burden of proof.