Federal Circuit Patent Watch: Patent Claims Found To Lack Patentable Subject Matter Because They Used “Functional Language, At A High Level Of Generality And

Precedential Federal Circuit Opinions

1. NATURE SIMULATION
SYSTEMS INC. v. AUTODESK, INC. [OPINION] (2020-2257,
10/17/2022) (Newman, Lourie, and Dyk)

Newman, J. The Court reversed a
district court judgment that the asserted patent claims were
invalid as indefinite. The Court held that “the district court
erred on the legal standard for claim indefiniteness, and that on
the correct standard the claims are not indefinite.” The Court
explained that the claimed subject matter was an improvement on
certain known methods and “partakes of known usages for these
established technologies.” The Court concluded that the
general approaches referenced in the patent were “sufficiently
well established in the art” that the claims were not
indefinite.

2. IBM v. ZILLOW GROUP,
INC. [OPINION] (2021-2350, 10/17/2022) (Reyna, Hughes, and
Stoll)

Hughes, J. The Court affirmed a
district court’s judgment on the pleadings that two patents
were invalid because they claimed abstract ideas that are
ineligible for patenting under 35 U.S.C. § 101. With respect
to the first patent, the Court explained that the claims are
directed to the abstract steps of “presenting a map, having a
user select a portion of that map, and then synchronizing the map
and its corresponding list to display a more limited data set to
the user.” In addition, the Court found that the claims do not
add any inventive concept to the abstract idea because the claim
“limitations use functional language, at a high level of
generality and divorced from any computer technology, to recite the
claimed functions.” With respect to the second patent, the
Court held that the claims are “directed to the abstract idea
of organizing and displaying visual information.” The Court
also concluded that the claims do not add any inventive concept to
the abstract idea because the claims “merely used
well-understood, routine, or conventional technology (a
general-purpose computer) to more quickly solve the problem of
layering and displaying visual data.”

3. FINJAN LLC v. ESET, LLC
[OPINION] (2021-2093, 11/01/2022) (Prost, Reyna, and
Taranto)

Reyna, J. The Court
reversed-in-part, vacated-in-part, and remanded the district
court’s summary judgment of invalidity for certain patents
“directed to systems and methods for detecting computer
viruses in a ‘Downloadable’ through a security
profile.” The district court had found the patents invalid as
indefinite based on its construction of the claim term
“Downloadable.” The Court reversed the district
court’s claim construction and vacated its indefiniteness
determination, concluding that the term “Downloadable” as
used in the asserted patents means: “an executable or
interpretable application program, which is downloaded from a
source computer and run on the destination computer.”

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