More Guidance on What Software IS and IS NOT Patentable

In a recent holding of Finjan Holdings, Inc., the Federal Circuit cited to another decision saying that they had previously concluded virus scanning is well-known, an abstract idea, and not patentable.  However, after further review, the Finjan patent  appeared to be claiming a method of operating differently than traditional virus scans that tagged as being previously-identified viruses.  In doing so, the Federal Circuit characterized the Finjan family of patents as using a “behavior-based” approach as compared to a “code-matching” approach of the past virus scan software programs.  Accordingly, the Federal Circuit found these patents patentable because the patents “recite specific steps . . . that accomplish the desired result.” Which it identified as technology enabling “more flexible and nuanced virus filtering” allowing “administrators to craft security policies with highly granular rules and to alter those security policies in response to evolving threats.”  What the Federal Circuit appears to have viewed as patentable was the fact that these claims produced a unique result, not merely reciting the steps to get to the result.


In another case, Real Estate Alliance (“REA”) owned patents for a method of searching for real estate on a computer. In a lawsuit against the Realtor Associations, Brokers, Listing Services and others, they asserted that they infringed their patents for the same method offered to a user to identify a geographic area of interest, and then designates the boundaries, within the geographic area, on a map, allowing the user to zoom into the area within the boundaries for available properties.  The Federal Circuit’s analysis started with explaining that a method of collecting information about available properties and displaying the information on a map is an “abstract idea.” Moreover, the patents cover nothing more that the “use of a computer for a conventional business purpose.”  That is, the Federal Circuit considered that “instead of focusing on the technical implementation details of the zooming functionality, for example, [the patent] recites nothing more than the result of the zoom.”  Further, the Court considered that the “claims are drawn to an abstract idea because they ‘claim the function of the abstract idea, not a particular way of performing that function.'” In this case, the Court found the claims not patentable and focused on whether there was a technical improvement to a computer, and not an improvement to how the result was accomplished – which was: finding available properties.

Some view this as being contradictory to the Finjan decision (discussed above).

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