United States: HP Fails To Construct A "Concrete" Path To Patentability Under Alice

Order Granting Motion for Summary Judgment, Hewlett Packard Co. v. ServiceNow, Inc., Case No. 14-cv-00570-BLF (Judge Beth Labson Freeman)

Since the Supreme Court decided Alice, district courts have increasingly invalidated patent claims directed to the use of general computers to implement "abstract" ideas.  One strategy for patent owners to demonstrate patent-eligible subject matter ¹ and thus survive Alice scrutiny is limiting claim constructions to define the implementing computer structure in a specific, concrete and specialized way.  This is what Hewlett Packard recently attempted, but failed to do, when defendant ServiceNow, Inc. moved for summary judgment of invalidity on the claims in four asserted patents.

In Hewlett Packard Co. v. ServiceNow, Inc., HP accused ServiceNow of infringing eight patents.  These patents are directed to software for assisting IT help desk operators track and respond to reported computer-related problems, known as "IT incidents," and automating the IT incident resolution process.  ServiceNow's motion asserted that the claims in four of the patents are directed to unpatentable abstract ideas.  At the time of opposing the motion, HP submitted its proposed constructions; in its reply, ServiceNow argued that the asserted claims are invalid even under the proposed constructions.  Judge Freeman agreed with ServiceNow, holding that, even using HP's constructions, the claims are framed in functional language that would broadly cover computer-automated systems for resolving IT incidents.  She held that, by broadly preempting such systems, the claims at issue would inhibit innovation by dissuading future inventors from developing new IT incident-resolution systems.

Turning to the patents addressed in the motion, the first (USP 8,224,683) is directed to a program that a company's IT helpdesk could use to efficiently monitor complaints and send reminders to a helpdesk operator before an impending action.  Judge Freeman found the claims ² did nothing more than describe the abstract idea of monitoring deadlines and providing alerts.  Judge Freeman then examined HP's proposed claim constructions to determine if they would limit the claim elements enough to transform the abstract idea into a concrete implementation.  Unfortunately for HP, she found that HP's proposed constructions of "monitoring server," "database," and "help desk" all recited nothing more than generic computer components "configured to" implement an abstract idea, which Judge Freeman found to be tantamount to claiming the abstract idea itself.  The only limitation she found to potentially have an inventive concept was displaying complaint "service tickets" at predetermined times based on urgency and contractually-set deadlines, but this too she found to be insufficient to save the claim.

The second patent (USP 6,321,229) claims "an apparatus and a method 'for accessing an informational repository'" in a hierarchical fashion. ³  Here, too, Judge Freeman found the claims to be directed to an abstract idea (categorizing and organizing information hierarchically) and so turned to the proposed claim constructions in search of patent-eligible subject matter.  HP argued that the claims were specific and concrete, and therefore not unpatentable abstract ideas, because they were limited to implementations using "derived containers" and "container definition nodes."  Judge Freeman concluded that the patentability of this invention turned on whether these two terms were meaningful limitations (i.e., specific, specialized data structures) or just idiosyncratic names for generic computer structures configured to implement an idea, as ServiceNow argued.  To make this determination, she turned to HP's claim constructions ⁴ and found that the constructions lacked sufficient detail and were instead functional and generic descriptions of unspecified data structures that lacked a description of how the data structures performed their functions.  Judge Freeman thus concluded that "there is no inventive concept in combining computer readable media with the idea of categorizing and organizing information hierarchically."

The third and fourth patents (USP 7,890,802 and 7,610,512) share a specification and are directed to computer-implemented methods for automating the resolution of IT incidents (i.e. software that uses "workflows" to help users resolve IT incidents).  Judge Freeman found that although some limitations in the relevant claims ⁵ added a degree of particularity, the majority merely embodied the abstract idea of defining and executing automated workflows.  HP argued that the claims were not so simple and pointed to limitations regarding "repair workflows," "operations," "steps," "responses," "transitions," "bindings," "repair contexts," and "repair frames."  Judge Freeman explained that these terms might be enough to transform the nature of the claimed inventions from abstract ideas to concrete implementations if they were defined in a precise and narrow way.  After turning to HP's proposed claim constructions, she found that these terms were not defined narrowly and specifically as HP argued, but rather were again functional and generic recitations of general computing concepts.  For instance, under HP's proposals, "repair workflow" is defined as "a set of instructions used by the system to resolve incidents." Similarly, "repair context" and "repair frame" are generically defined as data structures that allowed data to be stored for later access, with no further limiting details.  Judge Freeman thus found that, even taking HP's constructions into account, the claims were broadly worded and encompassed all forms of using a computer to automate the resolution of IT incidents.  HP tried to save these claims by pointing to the commercial success of the programs as support for their inventiveness, but Judge Freeman found that this argument applied to novelty and obviousness rather than patentability of the subject matter.

Judge Freeman thus invalidated the asserted claims in the four challenged patents as directed to unpatentable abstract ideas, further cementing Alice's place in patent jurisprudence.  If there is not already a "concrete" path to argue subject matter eligibility during litigation, a patent plaintiff asserting a software patent (or patent involving a computer-implemented idea) should consider advancing narrowing claim constructions that help define the invention in a specific, concrete and specialized way.

footnotes

1. 35 U.S.C. § 101 defines patent-eligible subject-matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, subject to the conditions and requirements of this title."  Alice and other recent decisions confirm that certain subject matter (i.e., laws of nature, natural phenomena, and abstract ideas) are unpatentable unless a patent claim as a whole transforms the claim into a patentable application.  There remains uncertainty as to what is required to transform such subject matter into patent-eligible subject matter.

2. Claim 12 of the '683 patent, which Judge Freeman found to be representative for § 101 purposes, recites:

3. Claim 8 of the '229 patent, also found representative, recites:

4. HP proposed to construe "derived container" as a "[d]ata structure capable of executing a query based on an attribute from one or more corresponding container definition nodes" and a "container definition node" as a "[d]ata structure having one or more attributes for accessing an information repository and related to creating a hierarchy of information."

5. Claim 1 of the '802 and '512 patents, also found representative, respectively recite:

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.