Ex Parte Michiels et al

Patent Trial and Appeal Board

Sep 13, 2018

14176938 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/176,938 02/10/2014
128144 7590
Rimon, P.C.
One Embarcadero Center
Suite 400
San Francisco, CA 94111
09/17/2018
FIRST NAMED INVENTOR
Wilhelmus P.A.J. Michiels
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
14-30113-US-Cl 6953
EXAMINER
PLECHA, THADDEUS J
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
09/17/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@rimonlaw.com
eofficeaction@appcoll.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte WILHELMUS P.A. J. MICHIELS and
PAULUS M. H. M.A. GORISSEN
Appeal2017-003044
Application 14/176,938 1
Technology Center 2400
Before JEFFREY S. SMITH, BRUCE R. WINSOR, and
SHARON PENICK, Administrative Patent Judges.
Opinion for the Board file by Administrative Patent Judge SMITH
Opinion dissenting filed by Administrative Patent Judges WINSOR
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
1 The Applicant is Irdeto B.V., which, according to the Appeal Brief, is the
real party in interest. App. Br. 1.
Appeal2017-003044
Application 14/17 6,938
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 37-42. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Representative Claim
37. A method of enabling a device to perform a cryptographic
operation involving an exponentiation CJ<' having a base C and an
exponent x by means of a white-box implementation of the
exponentiation, the method comprising:
receiving information indicative of at least a part of a plurality
of values iv~ and at least a part of information indicative of a plurality
of values ({)-~, the plurality of values ,.Jf satisfying tVr = c,t\ for a
plurality of values Jf, the plurality of values fift satisfying
:1~ - E'f~@tl~9.11, t - 1~.2\ . .. , r, wherein i is an integer, wherein r is an
integer, and wherein r J: 2; and
generating a function P configured to enable the device to
compute C"( without either of the precise value of the base C or the
exponent X being available to the device, wherein p = fif~t trJ1r;
encrypting a message m to obtain a ciphertext by using P to
compute C'X such that at least one of the precise value of the base C
and the exponent x are not available to the device during encryption;
wherein encrypting the message m comprises:
selecting a random integer k 1 with 1 S ~i ~ n - 1 ,
wherein n is an integer,
computing r· = ak:i., wherein a is associated with a
public key of the device,
defining ki = g(y), wherein g is a function,
computing ak~ by using P, wherein k2 corresponds to x,
computing lJ, = 'rn ·· {,,a)k1, ,. ak~, wherein a is a private
key of the device, and
generating the ciphertext given by (y, J).
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Examiner's Rejection
Claims 37-42 stand rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter.
ANALYSIS
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine
whether the claims at issue are "directed to" a judicial exception, such as an
abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
directed to a judicial exception, then we consider under step two whether the
claim recites additional elements that amount to significantly more than the
judicial exception. Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72-
73). The Supreme Court has described the second part of the test as the
"search for an 'inventive concept."' Alice, 134 S. Ct. at 2355 ( citing Mayo,
566 U.S. at 72-73).
Noting that the two steps involve "overlapping scrutiny of the content
of the claims," the Federal Circuit has described "the first-stage inquiry" as
"looking at the 'focus' of the claims, their 'character as a whole,"' and "the
second-stage inquiry (where reached)" as "looking more precisely at what
the claim elements add-specifically, whether, in the Supreme Court's
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terms, they identify an 'inventive concept' in the application of the ineligible
matter to which (by assumption at stage two) the claim is directed." Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
( citations omitted).
Step One: 1Yhether the Claims Are Directed to a Patent-
lneli,gible Concept (Abstract idea)
The Examiner finds the claims are directed to the abstract idea of
mathematical operations. Final Act. 5; Ans. 3. Appellants contend that the
claims are not directed to an abstract idea, but to an improvement in
computer related technology. App. Br. 7-11. According to Appellants, the
steps of receiving information and generating a function as recited in claims
37 and 38 are not directed to the abstract idea of exponentiation for a
cryptographic operation, but rather, are directed to a "method of enabling a
device to perform a cryptographic operation involving an exponentiation ex
having a base C and an exponent x by means of a white-box implementation
of the exponentiation" as recited in the preamble of each of claims 37-41.
App. Br. 8-9. Appellants identify similar receiving and generating steps in
claims 39-41. App. Br. 9-11.
Appellants' contention that the claims are not directed to the abstract
idea of exponentiation for a cryptographic operation does not persuasively
rebut the Examiner's finding that the claims are directed to the abstract idea
of mathematical operations. See Final Act. 5; Ans. 3. Similarly, Appellants'
contention that the claims are directed to a "method of enabling a device to
perform a cryptographic operation involving an exponentiation ex having a
base C and an exponent x by means of a white-box implementation of the
exponentiation" does not show error in the Examiner's finding that the steps
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of the claimed method "to perform a cryptographic operation" recite
mathematical operations.
Claim 37 recites the mathematical algorithm of "receiving [data];
generating [ a mathematical function]; encrypting a message m ... by using
[ the mathematical function] to compute [data]; wherein encrypting the
message m comprises: selecting [data], computing [data], defining [data],
computing [data] by using [ the mathematical function], computing [data],
and generating [data]." Each of claims 3 8-42 recites similar mathematical
algorithms for encrypting or decrypting data. We agree with the Examiner
that the claims are directed to the abstract idea of mathematical algorithms
for encrypting or decrypting data.
Claim 37 is similar to patent-ineligible mathematical algorithms
identified by the Supreme Court as abstract ideas, such as a mathematical
algorithm for converting binary-coded decimal numerals into pure binary
form (Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972)); a mathematical
algorithm for computing an alarm limit (Parker v. Flook, 437 U.S. 584, 594-
595 (1978)); and a mathematical algorithm for hedging against the financial
risk of price fluctuations (Bilski v. Kappas, 561 U.S. 593 (2010)).
Claim 37 is also similar to unpatentable mathematical algorithms
identified by the Federal Circuit as abstract ideas. For example, the claim in
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328 (Fed. Cir. 2017),
was directed to the abstract idea of encoding and decoding image data using
a mathematical formula. In SAP America, Inc. v. InvestPic, LLC, 898 F.3d
1161, 1164 (Fed. Cir. 2018), the claim was directed to a method for
calculating, analyzing, and displaying investment data comprising the steps
of selecting data, generating a distribution function, and generating a plot of
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the distribution function. In Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), the claims of
the challenged patent were directed to the abstract idea of organizing
information through mathematical correlations. Id. at 13 50-51. In Digitech,
the Federal Circuit held that a process that started with data, added an
algorithm, and ended with a new form of data was directed to an abstract
idea. Id. In this case, the method of claim 37 starts with data, adds a
mathematical encryption algorithm, and ends with a new form of data. We
discern no material difference between the Alice step one analysis in
RecogniCorp, SAP America, and Digitech, and the analysis here.
Appellants argue that the Examiner has not presented a prima facie
case nor provided any support for the assertion that the claims recite the
abstract idea of exponentiation for a cryptographic operation. App. Br. 11-
12. However, the Examiner has identified the abstract idea as mathematical
operations. Final Act. 5; Ans. 3. The Federal Circuit has held that the
Office carries its procedural burden of establishing a prima facie case when
its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection, "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) ( alteration in original) ( citation omitted). Here, the Examiner has met
this burden by identifying the claimed abstract idea as mathematical
operations. Appellants have not persuasively rebutted the Examiner's prima
facie case that the claims recite mathematical operations.
Appellants contend that the Examiner mischaracterized the invention
using an improperly high level of abstraction, untethered from the language
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of the claims. App. Br. 15-16. According to Appellants, the claims focus
on enabling a device to perform cryptographic operations without exposing
sensitive values to an attacker in a white-box environment. See App. Br.
12-15. Appellants contend that the claims here, as in Enfish, "focus on a
specific asserted improvement in computer capabilities." App. Br. 15.
In Enfish, the Federal Circuit determined that claims related to a
database structure were not abstract because their focus included a new
"self-referential table [that] functions differently than conventional database
structures." 822 F.3d at 1337. Similarly, in Visual Memory LLC v. NVIDIA
Corp., 867 F.3d 1253 (Fed. Cir. 2017), the Federal Circuit determined that
the claims at issue were directed to an "improved memory system" that
configured operational characteristics of a computer's cache memory based
on the type of processor connected to the memory system. Id. at 1261. In
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1305 (Fed. Cir.
2018), the Federal Circuit determined that the claims were directed to a non-
abstract improvement in computer functionality of enabling a computer
security system to tailor access for different users and ensure that threats are
identified before a file reaches a user's computer, rather than the abstract
idea of computer security writ large. Both Enfish and Visual Memory
concerned claims that focused on improved ways in which computers store
and access data. Finjan focused on improved ways of tailoring access to
different computers.
However, the claims here do not focus on ways that improve the
functioning of computer databases to store or organize information
analogous to the self-referential table in Enfish or the adaptable memory
caches in Visual Memory, nor do the claims focus on tailoring access to
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different computers as in Finjan. Rather, the focus of the claims here is the
improved mathematical algorithm. The claims here start with data, encrypt
or decrypt the data using mathematical algorithms, and end with a new form
of data. The Specification makes clear that off-the-shelf computer
technology is usable to carry out the analysis. See Spec. 7:5-11, 10:29-32,
11 :7. The claims fit into the familiar class of claims that do not "focus ...
on ... an improvement in computers as tools, but on certain independently
abstract ideas that use computers as tools." Electric Power, 830 F.3d at
1354.
We agree with the Examiner, at step one of the Alice analysis, that the
claims are directed to the abstract idea of mathematical algorithms.
Accordingly, we tum to the second step of the Alice analysis, in which we
determine whether the additional elements of the claims transform them into
patent-eligible subject matter.
,5tep 1\vo: W'Jwther Additional Elements Tranyform the idea
into Patent-Eligible 5'uldect JJauer
In step two of the Alice inquiry, we search for an "inventive concept"
sufficient to "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 ( citation omitted). To save the claims
at step two, an inventive concept must be evident in the claims. See id. at
2357.
Appellants contend that claims 37-42 include elements and
combinations of elements such that the claims are directed to significantly
more than the abstract idea. App. Br. 17. In particular, Appellants contend
the claimed limitations are not "well-understood, routine, and conventional
in the field" of cryptographic technologies. App. Br. 18-21. According to
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Appellants, claims that recite a combined order of steps or rules that are not
conventional are patent eligible. Reply Br. 2 ( citing Bascom Global Internet
Servs., Inc. v. AT&T mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
However, in Bascom, the claim recited a non-conventional and non-
generic arrangement of various computer components for filtering Internet
content, such as a "local client computer," a "remote ISP server," and
"controlled access network accounts." 827 F.3d at 1349-51. Appellants
have not identified a claimed non-conventional arrangement of various
computer components similar to the arrangement as claimed in Bascom.
In McRO, the Federal Circuit noted that the claims described a
physical display of realistic lip synchronization and facial expressions in
animated characters, rather than claiming the idea of a solution or outcome.
See SAP Am., 898 F.3d at 1167 (citing McRO, 837 F.3d at 1313-14). In
contrast to McRO's physical display, Appellants' "claimed improvement [is]
a mathematical technique with no improved display mechanism." See id.
The Federal Circuit has explained that a "claim for a new abstract idea
is still an abstract idea." SAP Am., 898 F.3d at 1163 (citation omitted).
Even assuming the claimed algorithm is "innovative, or even brilliant," that
would not be enough for the claimed abstract idea to be patent eligible. See
id. "The claims here are ineligible because their innovation is an innovation
in ineligible subject matter." Id. Their subject is nothing but a series of
steps that input data to mathematical functions to generate output data. See
id.
Appellants contend that the claims are similar to Example #4 of the
Subject Matter Eligibility Guidance issued January 27, 2015, available at
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,11df App. Br. 21-23. The claims in Example #4, unlike the claims here,
were limited to a mobile device comprising a GPS receiver, microprocessor,
wireless communication transceiver, and display that receives satellite data,
calculates pseudo-ranges, wirelessly transmits the pseudo-ranges to a server,
receives location data from the server, and displays a representation of the
location data. In contrast, the claims here do not recite any structural
limitations other than a generic "device," which, according to Appellants'
Specification, can be a generic computing device. See Spec. 7:5-11, 10:29-
32, 11:7.
Appellants contend that the mathematical algorithm is limited to a
computer device, which allows computer performance of a function not
previously performed by a computer. Reply Br. 4-5. As we stated above,
novelty is not enough for the claimed abstract idea to be patent eligible. See
SAP Am., 898 F.3d at 1163. In Benson, the Supreme Court considered a
patent that claimed an algorithm implemented on a general purpose digital
computer. 409 U.S. at 64. Because the algorithm was an abstract idea, the
computer implementation did not supply the inventive concept. Id. at 71-72
("The mathematical formula involved here has no substantial practical
application except in connection with a digital computer .... "). The mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358.
Appellants contend that claim 37 recites transforming a particular
article to a different state or thing. App. Br. 23. According to Appellants,
the claimed "message" is an article because the message conveys data that
can be discerned, and the claimed "ciphertext" is a different state or thing
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because it cannot be discerned without being decrypted. App. Br. 23-24.
However, the scope of the claimed "message" encompasses data, and the
scope of the claimed "ciphertext" encompasses new data output as the result
of applying a mathematical encryption algorithm to the data. As in Benson,
SAP America, and Digitech, a process that starts with data, adds an
algorithm, and ends with a new form of data is directed to an abstract idea.
See 409 U.S. at 71; 898 F.3d at 1167; 758 F.3d at 1350-51.
Appellants contend that the claims recite limitations "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks" and are therefore "significantly
more" than the abstract idea. App. Br. 24-25 ( emphasis omitted) ( citing
DDR Holdings LLC v. Hotels.com LP, 773 F.3d 1245 (Fed. Cir. 2014)). In
DDR Holdings, the Federal Circuit stated that the claims at issue "recite a
specific way to automate the creation of a composite web page .... " 773
F.3d at 1259. The Court found that the patent claims satisfied Alice step two
because "the claimed solution amounts to an inventive concept for resolving
[a] particular Internet-centric problem." Id. The claims of the instant
application contain no similar inventive concept. Nothing "transforms" the
abstract idea of encrypting and decrypting data into patent-eligible subject
matter. See Alice, 134 S. Ct. at 2357.
Appellants contend that the Examiner is incorrect in relying on Flook
for the proposition that mathematical algorithms cannot be patent eligible.
Reply Br. 4. We disagree with Appellants. In Alice, the Supreme Court
explained that the formula in Flook was an abstract idea, and the computer
implementation was purely conventional. Alice, 134 S. Ct. at 2358. The
Court stated that "Flook stands for the proposition that the prohibition
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against patenting abstract ideas cannot be circumvented by attempting to
limit the use of [the idea] to a particular technological environment." Id.
( alteration in original) ( citation omitted).
We agree with the Examiner's findings that the claims do not amount
to significantly more than the abstract idea itself. Accordingly, we sustain
the Examiner's 35 U.S.C. § 101 rejection of claims 37-42.
DECISION
The rejection of claims 37-42 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
12
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte WILHELMUS P.A. J. MICHIELS and
PAULUS M. H. M.A. GORISSEN
Appeal2017-003044
Application 14/17 6,938
Technology Center 2400
Before JEFFREY S. SMITH, BRUCE R. WINSOR, and
SHARON PENICK, Administrative Patent Judges.
WINSOR, Administrative Patent Judge, dissenting.
OPINION DISSENTING
Because I would hold claims 37-42 to be patent-eligible, I
respectfully dissent. More particularly, it is my view that representative
claim 37 is not directed to a judicial exception to patent eligibility, i.e., an
abstract idea, under 35 U.S.C. § 101. Accordingly, I would reverse the
Examiner's rejection of claims 37-42.
The Invention
Appellants' disclosed invention relates to "perform[ing] a
cryptographic operation involving an exponentiation c;:r having a base C and
Appeal2017-003044
Application 14/17 6,938
an exponent x by means of a white-box implementation of the
exponentiation ... such that at least one of the precise value of the base C
and the exponent x are not available to the device during encryption." Claim
37. Representative claim 37 reads as follows:
37. A method of enabling a device to perform a cryptographic
operation involving an exponentiation ex having a base C and an
exponent x by means of a white-box implementation of the
exponentiation, the method comprising:
receiving information indicative of at least a part of a plurality
of values (!')t_ and at least a part of information indicative of a plurality
of values Wi., the plurality of values {r.h satisfying (iJt = c1tt, for a
plurality of values Ai, the plurality of values (flt satisfying
x = II.0 1,t.'Pi-, t = 1$ 2l ... , r, wherein i is an integer, wherein r is
an integer, and wherein r ~ 2; and
generating a function P configured to enable the device to
compute C"'' without either of the precise value of the base C or the
exponent x being available to the device, wherein F = ITf.1 ,tJtt;
encrypting a message m to obtain a ciphertext by using P to
compute c~v such that at least one of the precise value of the base C
and the exponent x are not available to the device during encryption;
wherein encrypting the message m comprises:
selecting a random integer k1 with 1 S lf1 Sn -1 ,
wherein n is an integer,
computing y = a;k1, wherein a is associated with a
public key of the device,
defining k2 = Jl(Y), wherein g is a function,
computing ak~ by using P, wherein k2 corresponds to x,
computing ?J = rn • (r,G)k1 ·· alii wherein a is a private
key of the device, and
generating the ciphertext given by (y, J).
Appellants' Specification tells us that the purpose of the invention is
to address problems faced by digital "content providers [who] must deliver
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content to legitimate users across a hostile network to a community where
not all users or devices can be trusted." Spec. 1 :28-2:2. Appellants'
Specification explains as follows:
A white-box cipher is a block cipher which is well suited
for a white-box implementation of a cryptographic algorithm,
i.e., a software implementation for which it is difficult for an
attacker to extract the cryptographic key that is used. Such
white-box implementations are known to exist for symmetric
block ciphers, such as AES and 3DES. However, it would also
be interesting to white-box asymmetric ciphers, such as RSA
and ElGamal. A typical operation in asymmetric ciphers is an
exponentiation yX, where y and x can both be variable and
constant. In some block ciphers, the base y is more or less
constant whereas the exponent x varies more often. When
white-boxing such block ciphers ( or, more generally,
algorithms), it is advantageous if it the exponent x can be
efficiently changed. Also, it would be advantageous if an
implementation of yx were provided in which the value of x
may be hidden. In this text an approach to white-boxing block
ciphers ( or, more generally algorithms) is presented that has
these advantages.
Spec. 5:30-6:8.
The Test for Patent Eligibility
To be statutorily eligible, the subject matter of an invention must be a
"new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. Claim 37 is
directed to a "[a] method," i.e., a process. Thus, the claim is directed to one
of the four statutory categories of patentable subject matter. However, the
eligibility analysis does not end here, because the Supreme Court has held
there are implicit exceptions to the categories of eligible subject matter
identified in § 101, including laws of nature, natural phenomena, and
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abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int' l, 134 S. Ct. 234 7,
2355 (2014). Further, the Court has "set forth a framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. ( citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). The evaluation follows the two-part
analysis set forth in Mayo and reiterated in Alice: ( 1) determine whether the
claim is directed to an abstract idea ("Alice Step l "); and (2) if the claim is
directed to an abstract idea, determine whether the recited elements,
considered individually and as an ordered combination, contain an
"inventive concept" sufficient to transform the claimed abstract idea into a
patent-eligible application such that the claim amounts to significantly more
than the abstract idea itself ("Alice Step 2"). See Alice, 134 S. Ct. at 2355,
2357.
Alice Step 1
The majority holds that claim 37 is directed to an abstract idea, i.e., a
mathematical algorithm. I respectfully disagree. Instead, I agree with
Appellants that claim 3 7 is directed to an improvement in computer related
technology. See App. Br. 7-11.
The "directed to" inquiry of Alice Step 1 cannot simply ask whether
the claims involve a patent-ineligible concept, because "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Rather, "the 'directed
to' inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
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excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
To be sure, claim 37 is replete with mathematical expressions, but the
mere presence of mathematical expressions in a claim is not dispositive of
whether the claim is "directed to" an algorithm. See, e.g., Diamond v.
Diehr, 450 U.S. 175 (1981). I note in passing that every function that a
computer or system of computers performs is, at some level, defined by or
governed by an algorithm, however expressed. Our reviewing court,
however, has not held that only physical, as distinct from functional,
improvements to computers and systems of computers are patent-eligible.
See, e.g., DDR Holdings LLC v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir.
2014); Enfish, 822 F.3d 1327; Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d
1299, 1305 (Fed. Cir. 2018).
One of the functions of the system of computers known as the
"Internet" is to "provide[] users with convenient access to digital content"
(Spec. 1: 6), while protecting the interests of the content providers (Spec.
1: 16-19). In order to provide this access for the user and concomitant
protection for the providers, the digital content is encrypted, often using so-
called "white-box" ciphers to make it more difficult for an unauthorized user
to access content. Spec. 2:3-15. Appellants' invention purports to improve
the encryption of digital content, and thus the security of delivery of that
content, by permitting the use of a wider variety of encryption techniques
and more efficient changing of encryption parameters. See Spec. 5:30-6:8
(reproduced above).
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The Enfzsh court explained that "[t]he Supreme Court has suggested
that claims 'purport[ing] to improve the functioning of the computer itself,'
or 'improv[ing] an existing technological process' might not succumb to the
abstract idea exception." Enfish, 822 F.3d at 1335 (second and third
alteration in original) ( citing Alice, 134 S. Ct. at 2358-59). Claim 37 is
directed to an improved method of allowing a device to prepare digital
content for delivery from a provider to a user that achieves benefits
(increased protection against unauthorized access) particularly related to
computer technology. Like the claims for a self-referential database table at
issue in Enfzsh, claim 37 is directed to "an improvement [in] computer
functionality itself, not [to an] economic or other [process] for which [the]
computer is used in its ordinary capacity" as a tool. Enfish, 822 F.3d at
1336.
This is in contrast to the claims at issue in Intellectual Ventures I LLC
v. Capital One Bank, 792 F.3d 1363, 1367 (Fed. Cir. 2015), where the
computer was used as a mere tool for tracking financial transactions.
Furthermore, an improvement in digital content protection technology is
more than the mere manipulation of data found to be abstract in In re TL!
Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016)
( determining claims directed to "classifying and storing digital images in an
organized manner" were directed to an abstract idea); Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding claims
focused on collecting and analyzing information, and presenting the results
thereof to be an abstract idea); and Content Extraction and Transmission
LLC v. Wells Fargo Bank, National Association, 776 F.3d 1343, 1347 (Fed.
Cir. 2014) (holding that determining collecting, recognizing, and storing
6
Appeal2017-003044
Application 14/17 6,938
data is an abstract idea). In short, I agree with Appellants that claim 37 is
directed to a specific improvement in computer technology and is, therefore,
not directed to an abstract idea. See App. Br. 7-11.
Because I would hold that claim 37 is not directed to a patent-
ineligible concept under the first step of the Alice analysis, I would not reach
the second step of the Alice analysis. Enfzsh, 822 F.3d at 1339 (citing Alice,
134 S. Ct. at 2355).
7