On November 15, 2019, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) decided Koninklijke KPN N.V. v. Gemalto M2M GmbH, holding Koninklijke KPN N.V.”™s (“KPN”) U.S. Patent No. 6,212,662 (“the ”™662 patent”) directed to a method for error checking data transmissions contained patent-eligible subject matter under 35 U.S.C. § 101.
This case came on appeal to the Federal Circuit from the U.S. District Court for the District of Delaware (“District Court”) in which the district court granted Gemalto M2M GmbH”™s (“Gemalto”) motion to dismiss asserting the ”™662 patent”™s claims lacked patent subject matter eligibility. Specifically, the District Court found the claims were directed to the abstract idea of reordering data and generating additional data. Further, the District Court concluded there was no purported inventive concept captured in the ”™662 patent”™s claims. The ”™662 patents claims are as follows:
- A device for producing error checking based on original data provided in blocks with each block having plural bits in a particular ordered sequence, comprising:
a generating device configured to generate check data; and
a varying device configured to vary original data prior to supplying said original data to the generating device as varied data;
wherein said varying device includes a per-mutating device configured to perform a permutation of bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data.
- The device according to claim 1, wherein the varying device is further configured to modify the permutation in time.
- The device according to claim 2, wherein the varying is further configured to modify the per-mutation based on the original data.
- The device according to claim 3, wherein the permutating device includes a table in which subsequent permutations are stored.
KPN timely appealed with respect to claims 2-4.
Under review, the Federal Circuit first stated that to determine patent subject matter eligibility it must implement the two-part Alice test: (1) determine whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea, and (2) if so, decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. The Federal Circuit further noted that “in cases involving software innovations, the step one inquiry often turns on whether the claims focus on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool.”
With respect to the first part of the Alice test, the Federal Circuit found claims 2-4 patent eligible since the claims recite a specific implementation that improved the ability of prior art error detection systems. Critically, the Federal Circuit explained the limitation of claim 2 enabled the claimed invention to better detect systematic errors when compared to the prior art error detection systems. For instance, the Federal Circuit concluded the ”™662 patents method of varying the way check data is generated from time to time so that the same defective check data does not continue to be produced for the same type of persistent systematic error was a “new way of generating check data that enables the detection of persistent systematic errors in data transmissions that prior art systems were previously not equipped to detect.” Additionally, the Federal Circuit determined the claims recited a specific solution for accomplishing the purported improvement ”“ varying the way check data is generated by modifying the permutation applied to different data blocks ”“ rather than simply reciting the desired result.
Accordingly, the Federal Circuit found the ”™662 patent”™s claims were not abstract under step one of Alice, and therefore, did not need to analyze step two of Alice. This case demonstrates the importance of incorporating claim limitations in software innovations that recite specific ways to achieve a technological improvement.