In the Internet age we are all bombarded with “push” content on a wide
range of topics. Recently, I was directed to an article
about a company called “CounterPath” in the Wall Street Journal. I am not
affiliated with Counterpath in any manner. In fact, I was blissfully unaware of
the company’s existence until a link to the article appeared unbidden in my
inbox.
The article has the look and feel of a press release and it touts the
recent grant (June 24, 2014) of US
8,763,081. Specifically, the article says “Consumer expectations
for apps are high and this patented technology positions us at the
forefront of the industry as the only VoIP application provider with a patented
SIM based authentication methodology.”
Those readers familiar with USPTO procedures will understand that that
publication of a patent on June 24, 2014 means that the notice of allowance was
issued considerably earlier (in this case on February 3, 2014). This is significant because it means that the
Supreme Court decision in Alice v CLS bank occurred between the time the notice
of allowance was issued and the time the granted patent was published. The
Preliminary instructions to the Examining corps of the USPTO which explain how
Examiners should apply the Supreme Court decision in Alice v CLS Bank were published one day
after CounterPath’s patent (June 25, 2014). This means that neither the
Examiner nor the Applicant was able to consider the newly promulgated criteria
for evaluation of §101 patent eligibility during examination (The first office
action on the merits issued on October 30, 2009; after the CAFC had suggested
the machine or transformation test in Bilski and before the Supreme
court had ruled on the Bilski case; At that time the operative instructions to
Examiner’s were the “first” Bilski memorandum dated August 24, 2009).
As a VoIP consumer “SIM based authentication” sounds interesting, but
as a patent practitioner, the set of circumstances outlined above sent me
straight to PAIR to have a look at the file wrapper.
Here’s what I found: application 11/397,313 was the subject of a
restriction requirement and five office actions. The issue of § 101 patent
eligibility does not seem to have been raised during examination. Several §102 and §103 rejections were made
during prosecution and the application was eventually placed in condition for
allowance by an Examiner’s amendment.
The granted patent contains two independent claims, 1 and 11, which
are presented here with the Examiner’s amendment underlined:
1.
An apparatus that is
removably attachable to a computer system, the apparatus comprising:
an
authentication module including a module compatible with authentication in a
mobile telephone network, the module including at least one of a Subscriber
Identification Module (SIM), a Universal Subscriber Identity Module (USIM), a
3GPP IP Multimedia Subsystem Services Identity Module (ISIM), and a module
compatible with a CDMA or 3GPP2 networks;
a memory
with application software stored therein, the application software,
including instructions for execution of a communication application on
the computer system, the communication application including a configurable
user interface for emulating one of a plurality of mobile telephone devices;
and
an interface
for communicating with a remote server over a data communication network;
wherein the
application software includes instructions, which, when loaded and executed on
the computer system cause the computer system to:
establish by a first application executing
as a stand-alone application in an operating environment of an operating system
of the computer system an application layer connection between the first
application and the remote server without requiring a service of another
application on the computer system to:
establish the application layer connection;
and
use by the first application executing on
the computer system the authentication module to automatically authorize an
application layer interaction between the first application and the remote
server on the application layer connection.
11. A method comprising:
loading executable software for a first application
from a removable device onto a computer system, the first application
including a communication application including a configurable user interface
for emulating one of a plurality of mobile telephone devices; and
executing the software on the computer system,
including:
establishing
by the first application an application layer connection between the first
application executing as a stand-alone application in an operating environment
of an operating system of the computer system and a remote server over a data
communication network without requiring a service of another application on the
computer system to establish the application layer connection,
accessing
by the first application executing on the computer system an authentication
module on the removable device, the authentication module including a module
compatible with authentication in a mobile telephone network, the module
including at least one of a Subscriber Identification Module (SIM), a Universal
Subscriber Identity Module (USIM), a 3GPP IP Multimedia Subsystem Services
Identity Module (ISIM), and a module compatible with a CDMA or 3GPP2 networks,
and
using
the first application executing on the computer system the authentication
module to automatically authorize an application layer interaction between the
first application and the remote server on the application layer connection.
The notice of allowance indicates that the claims “…are allowable over
the prior art of record through this Examiner’s amendment.”
Looking at this statement through the lens of Alice Corp v CLS Bank
one can read it as meaning that the portions of claims 1 and 11 which are not
underlined describe a “…generic computer
performing generic computer functions that are well understood, routine and
conventional activities previously known to the industry.” This seems like a plausible
assessment since the applicant was unable to overcome the art based rejections
after five office actions (although the possibility of an intransigent Examiner
cannot be ruled out).
Now let’s try to guess how an accused infringer might try to
invalidate claims 1 and 11 based upon the current §101 standards for subject
matter eligibility using the two part test the USPTO is currently telling their
Examiners to use. The application was filed on April 3, 2006.
Part 1: Determine
whether the claim is directed to an abstract idea. The accused infringer might
say that the claims are directed towards the abstract idea of using various types
of SIM cards (the authentication module) for authentication in a network. This
could be characterized as “An idea of itself” by the accused infringer. This
would then require analysis under part 2.
Part 2: Determine whether any element or combination of
elements in the claim …ensures that the claim amounts to significantly more
than the abstract idea itself.
Of course the problem we all have with significantly more is
that we are not sure what it means. Looking
at the list of positive and negative examples provided by the USPTO, the one
that the accused infringer would most likely latch onto here is “requiring no more than a generic computer
performing generic computer functions that are well understood, routine and
conventional activities previously known to the industry.”
If we look at claim 1 we have:
An apparatus that is
-attachable to a
computer;
-has a SIM based
authentication module
- a memory storing
application software
-interface with a remote server
-description of the application software.
If we leave aside for a moment the description of the application
software we are left with attachable to a computer (IBM had a commercially
available PDA/mobile phone available in 1992 which presumably attached to a
computer for synchronization), a SIM card (first made/sold by Giesecke and
Devrient in 1991), a memory storing application software (Sony’s memory stick
was available in 1998; first patent on a flash drive was filed in 1999),
interface with a remote server seems to be best explained by Fig 4 “…connectivity
over the Internet and can access the NCG 310 using standard IP- and
UDP/TCP-based communication. As an initial step of execution of the
communication application, the application sends a request to the dongle 100 to
read the identity of the NCG server 310 with which it should register, and the
dongle 100 returns a SIP identity where the application should register,…”
(again all based on protocols thast were standard in the 1990s).
If the hypothetical accused infringer were to put forward this type of
argument, the patentee would have to devote valuable trial resources to offering
a counter analysis. Even if that effort by the patentee were successful, it
would still shift the focus of the proceedings away from the actual activity of
the accused infringer.
In summary, arguments of this type seem destined to replace the
inequitable conduct defense employed almost reflexively by accused infringers
prior to the Therasense decision, at least in the field of computer
implemented inventions.
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