IP Law Daily Claims for ‘application program management on computer network’ ineligible under Section 101
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Thursday, March 30, 2017

Claims for ‘application program management on computer network’ ineligible under Section 101

Software companies defending against infringement claims by Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively, "Uniloc") showed that non-means-plus-function claims of two Uniloc patents related to "application program management on a computer network" were ineligible for patent protection, the federal district court in Marshall, Texas, has ruled. The asserted claims were directed to abstract ideas and lacked inventive concepts rendering them patent-eligible. The defending companies failed, however, to show that means-plus-function claims of the patents were similar in scope to the ineligible claims. The motion to dismiss was denied without prejudice as to the means-plus-function claims (Uniloc USA, Inc. v. AVG Technologies USA, Inc., March 28, 2017, Schroeder, R.).

Patents-in-suit. The case was a consolidation of six patent infringement actions in which Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively, "Uniloc") asserted infringement by software companies of U.S. Patent Nos. 6,510,466 ("the ’466 Patent"), entitled "Methods, Systems and Computer Program Products for Centralized Management of Application Programs on a Network," and 6,728,766 ("the ’766 Patent"), entitled "Methods, Systems and Computer Program Products for License Use management on a Network." The patents-in-suit related to "application program management on a computer network." The computer network included a server supporting client stations and was called a "client-server environment." The client-server environment was characterized by the possibility than any given user may use different clients at different times. The invention of both patents sought to centralize application management so that "the entire process [can] be controlled from a single point for an entire managed network environment."

The ’466 and ’766 Patents addressed different aspects of application management in the client-server environment. The ’466 Patent addressed installing application software on the server and providing instances of that software to the clients for execution. The ’466 Patent further addressed establishing a user-specific desktop interface for clients from which users may select display regions associated with the application software. The ’766 Patent addressed the management of licenses for the application software, including maintaining license-related policies and information in the client-server environment such that license availability can be communicated to clients on a user-specific basis.

Section 101 challenge. The software company defendants moved to dismiss Uniloc’s complaint on the ground that both patents claimed ineligible subject matter under 35 U.S.C. §101 and lacked an "inventive concept" rendering the claims patentable. According to the defendants, the asserted claims were directed to the abstract idea of "managing the distribution of software over a network," preempting all ways of managing applications in a client-server environment. The court granted the motion in part but determined that the defendants failed to show that all of the asserted claims were ineligible for protection. Although the asserted non-means-plus-function claims were directed to abstract ideas and lacked inventive concepts rendering them eligible for protection, the defendants failed to make sufficient allegations to establish that the asserted means-plus-function claims were sufficiently similar to the non-means-plus-function claims to similarly fail under Section 101.

Abstract ideas. The court agreed with Uniloc’s contention that "managing the distribution of software over a network" described the claims at too high a level of abstraction. However, the court decided that this was not fatal to the defendants’ motion. The defendants’ description is not "untethered from the language of the claims" because it was derived from the preambles of claim 1 of the ’466 Patent and claim 1 of the ’766 Patent. Moreover, the defendants showed that the claims were directed to abstract ideas at a lower level of abstraction.

The ’466 Patent was directed to providing a user-specific desktop interface that included establishing display regions associated with application programs for which the user is authorized and, in response to the user’s selection of one such display region, providing an instance of the application program to the user’s client for execution. According to the court, the claims did not improve the functioning of a computer or computer network because "increased efficiency in the management of application programs" was not a technological benefit. Additionally, the claims were overly vague because they recited "establishing a user desktop" with certain features without claiming any particular way of programming or designing the software to create user desktops that had these features.

The ’766 Patent was directed to using "license management policy information" to provide an indication of whether a license was available to a user for an application program in response to a request for license availability. Claims directed to the maintenance of information and announcement of that information in response to a request had been found to be abstract, the court said.

Inventive concepts. The court found that claims 1, 2, and 7 of the ’466 Patent and claims 1 and 3 of the ’766 Patent lacked inventive concepts and therefore were ineligible. The limitations of these claims described routine computer functions or processes carried out using generic computer components. Accordingly, these claims were ineligible under Section 101.

Means-plus-function claims. The defendants failed, however to show that the scope of the patents’ means-plus-function claims (claims 15 and 22 of the ’466 Patent and claims 7, 9, 13 and 15 of the ’766 Patent) were similar to the scope of the non-means-plus-function claims (claims 1 and 7 of the ’466 Patent and claims 1 and 3 of the ’766 Patent), the court said. Because means-plus-function claims had a narrower scope than non-means-plus-function claims, they may be patent-eligible even when similar non-means-plus-function claims are not. The defendants only made arguments with respect to the non-means-plus-function claims and had not shown the latter to be representative of the means-plus-function claims; therefore, the motion to dismiss was denied without prejudice as to the means-plus-function claims.

The case is No. 2:16-cv-00393-RWS.

Attorneys: Paul J. Hayes (Cesari & McKenna LLP) and Brett Aaron Mangrum (Etheridge Law Group, PLLC) for Uniloc USA, Inc. and Uniloc Luxembourg, S.A. Christopher William Adams (Squire Patton Boggs [US] LLP) for Bitdefender LLC. Christopher Campbell (Cooley LLP) for Piriform, Inc. Melissa Richards Smith (Gillam & Smith, LLP) for Ubisoft, Inc. Casey A. Kniser (Patterson Thuente Pedersen, PA) for Kaspersky Lab, Inc.

Companies: Uniloc USA, Inc.; Uniloc Luxembourg, S.A.; AVG Technologies USA, Inc.; Bitdefender LLC; Piriform, Inc.; Ubisoft, Inc.; Kaspersky Lab, Inc.

MainStory: TopStory Patent TechnologyInternet TexasNews

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