IP Law Daily, PATENT—N.D. Cal.: Three claims of cybersecurity patents found invalid under Alice test, (Apr 17, 2024)

By Kevin M. Finson

The remining claims were not able to be resolved on the pleadings, despite claim construction.

In a third opinion addressing the patentability of certain claims of cybersecurity patents Fortinet has asserted against a competitor, the federal district court in San Francisco has determined following claim construction that three claims are invalid as directed to a patent-ineligible abstract idea. Issues of fact still existed as to the remaining claims (Fortinet, Inc. v. Forescout Technologies, Inc., April 15, 2024, Chen, E.).

Fortinet, Inc. (Fortinet) was the owner of U.S. Patents Nos. 9,948,662 (the ’662 patent), 9,894,034 (the ’034 patent), and No. 9,503,421 (the ’421 patent), all of which were directed to cybersecurity products. In 2020, Fortinet brought suit for infringement of the ’662 patent against Forescout Technologies, Inc. (Forescout), a competitor in the commercial cybersecurity field. Forescout initially moved to dismiss on the ground that the asserted claims of the ’662 patent were patent-ineligible for being directed at an abstract idea under 35 U.S.C. § 101. This motion was denied due to the limited record, with leave to reassert it at a later stage of the proceeding. Fortine filed a first amended complaint asserting, asserting infringement of two additional patents: the ’034 and ’421 patents. Forescout then moved to dismiss the amended complaint, arguing the newly alleged patents are invalid as claiming patent-ineligible subject matter, which the court denied. After claim construction, Forescout reasserted its abstract idea arguments, now in the form of a motion for judgment on the pleadings. The court again considered the two-step Alice test.

Reconsideration. Fortinet argued that the motion for judgment on the pleadings was a thinly-veiled improper request for reconsideration of the motion to dismiss. The court found no merit in this argument, noting that it had expressly allowed Forescout to reassert the abstract idea arguments at a later point in the proceeding and that the completion of claim construction made it appropriate to address these issues at the present time.

The ’662 patent. Two of the asserted claims, 5 and 13 of the ’662 patent, related to the use of a “trust level” corresponding to security features which could be disabled. The claims merely enumerated types of information that could be gathered to determine a trust level, and did not show any inventive concept to differentiate it from ordinary mental processes. These claims were held to be invalid.

The ’421 patent. Claim 18 of the ’421 patent included references to a “SIEM” device or system, which the court construed as a “device/system that identifies and manages security threats by collecting and analyzing logs of security events.” In light of this construction, the court found that the claim performed such tasks in a sequential order, just the same as any individual dividing a large task into smaller parts. This was not computer-oriented detail that could support an inventive concept, it was just taking ordinary human activities and performing them on a computer described in functional, not technical, terms.

The court held that each of the other asserted claims still contained some factual dispute not resolved by claim construction, including specific technical details about the any improvements over the prior art. Judgment on the pleadings was thus denied as to the remaining claims.

The Case is No. 20-cv-03343-EMC.

Attorneys: John M. Neukom (Debevoise & Plimpton LLP) for Fortinet, Inc. Eimeric Reig-Plessis (Winston & Strawn/Chicago) for Forescout Technologies, Inc.

Companies: Fortinet, Inc.; Forescout Technologies, Inc.

Cases: Patent CaliforniaNews