IP Law Daily, PATENT—D. Colo.: Network software patching patents fail to pass muster under ‘Alice’, (Apr 17, 2023)

By Thomas Long, J.D.

Claims directed to abstract idea of adding automation to manual process of finding and fixing software bugs did not contain “inventive concept”; Section 101 eligibility issue was appropriate to adjudicate at pleadings stage.

Patent claims relating to systems and methods for updating software across a network using “patch fingerprints” were invalid because they were directed to ineligible subject matter under Section 101 of the Patent Act, the federal district court in Denver has decided. Ruling in the context of a motion to dismiss on the pleadings, the court said that the representative claims of each of the patents-in-suit were directed to the abstract idea of adding automation to a well-established manual process of identifying and fixing software bugs on computers. The claims merely described using existing and ordinary functional components to automate what had previously been done by humans. The patent claims’ generic statements regarding information gathering and exchange did not set forth an inventive concept rendering the claims patent eligible. The court dismissed an infringement suit brought by Ivanti, Inc., against software patching services provider Patch My PC, LLC (Ivanti, Inc. v. Patch My PC, LLC, April 13, 2023, Wang, N.).

Patents-in-suit. Ivanti brought infringement claims regarding three patents that “relate to systems and methods for updating existing software across a remote network based on the use of patch fingerprints to check for the need to update software and then update[e] that software as required.” According to Ivanti, the inventions covered by the patents—U.S. Patent No. 6,990,660 (“the ’660 Patent”); U.S. Patent No. 7,823,147 (“the ’147 Patent”); and U.S. Patent No. 8,407,687 (“the ’687 Patent”)—“facilitate software development, software installation, software updating, and file distribution based on software and patch finger printing across multiple operating systems and devices, across a network.” The patented systems and methods employ a “package computer” that maintains software patches that may be needed to update “target computers,” and an “update server” that accesses those software patches so that the patches can be deployed to the target computers. The update server may also include “a repository component” that maintains “patch fingerprint” information and information about the network’s target computers.

Infringement allegations. Ivanti asserted that Patch My PC, LLC, infringed the patents through its “manufacture, sale, offer for sale, and use of … patching services.” Patch My PC’s accused instrumentalities automate the process of updating software for a system of client or target computers by downloading software updates from a package computer to an update server, using a patch fingerprint to identify software updates and their applicability to a target computer, gathering information about the target computers, and deploying updates to target computers.

Subject-matter eligibility. Patch My PC moved for dismissal of the infringement claims under Federal Rule of Civil Procedure 12(b)(6) on the ground that the patents-in-suit all claimed unpatentable subject matter under 35 U.S.C. § 101. Ivanti countered by arguing that the Section 101 questions were not appropriate to adjudicate in the context of a 12(b)(6) motion, at a stage of the litigation when the plaintiffs’ allegations are deemed to be true. According to Ivanti, fact questions existed regarding whether the patent claims disclosed “inventive concepts” rendering them patent-eligible under the familiar Alice test.

Resolution at pleadings stage. The district court noted that the Federal Circuit had held that Section 101 questions may be resolved at the pleadings stage, but because patent eligibility was a question of law that often involved underlying questions of fact, doing so is appropriate “only when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law.” The district court interpreted Federal Circuit precedent to mean that it must determine whether there are “concrete allegations … that individual elements and the claimed combination are not well-understood, routine, or conventional activity” or “concrete allegations regarding the claimed combination’s improvement to the functioning of the computer.”

Abstract idea. Turning to the first step of the Alice test, the court considered whether, as Patch My PC argued, all of the patent claims were directed to the abstract idea of updating software stored on a computer. Ivanti’s contention was that the claims were directed to technological improvements in software patching. The court first determined that the “patch fingerprints” limitations did not disclose a new type of file, and it noted that the specification reflected that patch fingerprints were in prior art. The claims did not define any new type of patch fingerprint; they merely defined how the patch fingerprint was used. Furthermore, the inclusion of limitations disclosing the use of XML metadata did not change the analysis because nothing in the specification suggested a novel “recipe” of using XML, instead describing XML use as a known, preferred implementation for data transfer. With respect to Ivanti’s contentions regarding post-installation monitoring, the court said that claims containing this limitation did not actually disclose any definition or structure, but simply the end outcome. Accordingly, the court concluded that the representative claims of each of the patents-in-suit were directed to adding automation to a well-established manual process of identifying and fixing software bugs on computers—an abstract idea.

Inventive concept. Even though the claims were directed to an abstract idea, they could withstand Section 101 scrutiny if they included an “inventive concept”—additional elements that, either individually or in combination—rendered the claims patentable. “To survive step two,” said the court, “the claims must incorporate something ‘beyond conventional computing hardware and software.’”

According to Patch My PC, the claims merely recite functional components automating what had previously been done by humans. Ivanti contended that there were factual issues that precluded the court from determining whether the asserted claims contained an inventive concept, but it did not point to factual allegations in its complaint. Instead, it argued that the use of patch fingerprints to ascertain, install, and monitor software upgrades constituted an inventive concept. According to Ivanti, the components of the claimed invention are distributed in a way that allows multiple applications on multiple computers to be simultaneously updated from a single control center, instead of in a piecemeal fashion.

The court agreed with Patch My PC, concluding that the claims simply utilize known components in understood and conventional ways. “Indeed, nothing in the claim language employs specific directions regarding programming or even instructions for what information the patch signature and/or the existence test is using or how it should be used, or how monitoring is accomplished,” the court said. “Instead, the Asserted Claims utilize generic statements regarding information gathering and exchange; use of such information within configurations; and monitoring the attempted download for an outcome.” Because Ivanti’s conclusory allegations that the claims embody multiple inventive concepts were insufficient, the court held that the claims were invalid as claiming unpatentable subject matter under 35 U.S.C. § 101 and granted Patch My PC’s motion to dismiss.

The case is No. 22-cv-00643-NYW-SKC.

Attorneys: Emily Lauren Wasserman (Davis Graham & Stubbs LLP) and Michael Bryan Dunbar (Heim Payne & Chorush, LLP) for Ivanti, Inc. Daniel W. McDonald (Merchant & Gould PC) for Patch My PC, LLC.

Companies: Ivanti, Inc.; Patch My PC, LLC

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