By John W. Scanlan, J.D.
When the bulk of a claim is directed to an abstract idea, its character as a whole is directed to an abstract idea when remaining limitations provide only necessary antecedent and subsequent components.
An Ericsson patent for a security system for apps on mobile phones was not patent eligible because it was directed to the abstract idea of controlling access to or limiting permission to resources, a divided U.S. Court of Appeals for the Federal Circuit ruled in reversing a district court’s decision finding patent infringement and vacating its award of damages. In a dissenting opinion, Circuit Judge Newman criticized the decision both for allowing the issue to be appealed and for creating new law regarding patent eligibility (Ericsson Inc. v. TCL Communication Technology Holdings Ltd., April 14, 2020, Prost, S.).
Ericsson Inc. and Telefonaktiebolaget LM Ericsson (together, "Ericsson") own U.S. Patent No. 7,149,510 (the ’510 patent), entitled "Security Access Manager in Middleware." This patent describes "a system and method for controlling access to a platform for a mobile terminal for a wireless telecommunications system." In 2015, Ericsson sued TCL Communication Technology Holdings, Limited, TCT Mobile Limited, and TCT Mobile (US) Inc. (together, "TCL") for infringement of this patent and four others. After the other four patents were removed from the case, TCL moved for summary judgment on the asserted claims of the ’510 patent, arguing that they were patent-ineligible. The court denied the motion, finding that the claims were not, as a matter of law, directed to an abstract idea but to an improved technological solution to security software for mobile phones.
The case went to trial, at which Ericsson asserted that TCL infringed claims 1 and 5 of the patent by manufacturing and selling cell phones with the Android operating system, which included a security system for allowing users to choose which apps have access to certain services on the phones. The jury found that TCL had willfully infringed these claims and awarded damages to Ericsson. TCL moved for renewed judgment as a matter of law and for a new trial on damages and willfulness. The district court initially agreed to the new trial on damages but subsequently changed its mind and reinstated the jury verdict. It also denied TCL’s motion for a new trial on willfulness. TCL appealed.
Right to appeal. The Federal Circuit first determined that TCL had not waived its right to appeal the issue of patent ineligibility. Ericsson argued that TCL could not raise this issue on appeal because it had not raised it in a motion for judgment as a matter of law pursuant to Federal Rule of Civil Procedure R. 50. The district court’s decision was based on its analysis of the claim language and existing case law, not on any factual issues that could have been raised at trial. Therefore, the Federal Circuit said, the district court’s ruling did not merely deny summary judgment but effectively issued a judgment of patent eligibility to Ericsson; this was sufficient to preserve the issue for appeal. Even if the district court had not effectively granted judgment to Ericsson, both Federal Circuit and Fifth Circuit precedent gave the Federal Circuit discretion to hear this issue on appeal. The issue was fully briefed, argued, and decided by the district court, and then again fully briefed and argued before the Federal Circuit. As a result, the record was complete, no party would be prejudiced, and the only remaining issues were purely legal.
Abstract idea. Stating that the claims were written in "technical jargon," the Federal Circuit said that a close analysis nevertheless showed that they required nothing more than the abstract idea of controlling access to or limiting permission to resources. The four identified components of the "access controller" amounted only to the use of "an access controller for controlling access" by "receiving a request" and them "determining if the request can be granted." This was the core of claim 1 and was an abstract idea. Claim 5 also was directed to an abstract idea because it added only that the access determination should be "based on an identification." The court rejected Ericsson’s argument that controlling access to resources was not abstract because it did not resemble one previously recognized by the U.S. Supreme Court. It observed that controlling access to resources can be performed by a human without technology and is present in much human activity, such as the requirement to obtain a library card in order to borrow library books. The fact that Ericsson argued that its claims were limited to mobile phones did not make the claims less abstract, with the court noting that the asserted claims themselves were not limited in that manner but required only a "system for controlling access to a platform."
Inventive concept. Furthermore, the asserted claims did not contain an inventive concept. Ericsson argued that the claims recited three layers of software with the bottom layer further arranged into vertical functional software stacks, with the "arrangement of horizontally partitioned functional software units" providing the inventive concept. However, the claims themselves did not recite the purportedly novel concepts or other related elements and the court could not rely upon the specification to find the details missing from the claim language. Even if the recited elements resulted in an improved way of controlling access to resources, adding computer functionality to increase the speed or efficiency of a process does not make an abstract idea patent eligible.
Dissent. A dissenting opinion by Circuit Judge Pauline Newman criticized the majority’s decision both on procedural and substantive grounds. Judge Newman argued that TCL had not properly preserved the Sec. 101 patent eligibility issue because it had not addressed the issue at trial or in a post-trial proceeding, and the issue was not mentioned in the district court’s final judgment. As a result, she said, the majority ignored the Federal Rules of Civil Procedure and existing precedent from multiple circuits in order to reach the issue.
Judge Newman also asserted that the claims were, in fact, not directed to an abstract idea, with the claimed invention constituting a "complex, multi-layered system of computer-implemented interception, conversion, and control." Instead of discussing the findings of the district court, the Alice criteria, or existing precedent, the majority created new law for Sec. 101 by appearing to require that all technological information in the specification be recited in the claims, she asserted. She also criticized the majority for contravening the statutory estoppel of PTAB proceedings between the same parties and for ignoring additional claim limitations as irrelevant to whether the bulk of the claim was abstract.
This case is No. 18-2003.
Attorneys: Theodore Stevenson (McKool Smith PC) for Ericsson Inc. and Telefonaktiebolaget LM Ericsson. Lionel M. Lavenue (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for TCL Communication Technology Holdings Ltd., TCT Mobile Ltd. and TCT Mobile [US] Inc.
Companies: Ericsson Inc.; Telefonaktiebolaget LM Ericsson; TCL Communication Technology Holdings Ltd.; TCT Mobile Ltd.; TCT Mobile [US] Inc.
MainStory: TopStory Patent GCNNews FedCirNews
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