The Court of Appeals for the Federal Circuit handed Intellectual Ventures a defeat in its patent enforcement dispute with Symantec Corp. and Trend Micro Inc., by affirming a district court’s invalidation of two cybersecurity patents and reversing a decision declaring the claim of a third as invalid under Alice.

The ruling was handed down Friday, Sept. 30, by Circuit Judges Timothy Dyk, Haldane Robert Mayer and Stoll, and the 2-1 decision was written by Judge Dyk with Judge Kara Stoll dissenting.

“Intellectual Ventures I LLC sued Symantec Corp. and Trend Micro1 for infringement of various claims of U.S. Patent Nos. 6,460,050, 6,073,142, and 5,987,610. The district court held the asserted claims of the ’050 patent and the ’142 patent to be ineligible under § 101, and the asserted claim of the ’610 patent to be eligible. We affirm as to the asserted claims of the ’050 patent and ’142 patent, and reverse as to the asserted claim of the ’610 patent.”

The jury in the case in U.S. District Court in the eastern District of Texas originally awarded $9 million for infringement of the ’142 patent and $8 million for infringement of the ’610

Intellectual Ventures appealed the decision on the two invalidated patents and Symantec appealed the decision upholding to the ‘610 patent.

The case against Trend Micro did not go to trial because Trend Micro brought a motion for summary judgment of invalidity under Section 101 for all of the asserted claims. The appellate court noted that after Trend Micro submitted its motion, Intellectual Ventures withdrew its assertion of claim 7 of the ’610 patent against Trend Micro, which had been the only claim of the ’610 patent asserted against Trend Micro.

In reversing the decision on the validity of the ‘610 patent, the appellate court said the following:

“As we explained in TLI Communications, the claim here is ‘not directed to a specific improvement to computer functionality. Rather, [it is] directed to the use of conventional or generic technology in a nascent but well known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.’ 823 F.3d at 612 Claim 7 of the ’610 patent is not patent-eligible under Section 101.

In dissent, Judge Stoll agreed with the district court that the claimed invention was eligible under Section 101.

“Analyzing claim 7 under the Mayo/Alice framework, I accept the majority’s step-one determination that the patent is directed to the abstract idea of “virus screening.” But I depart from the majority’s analysis at step two—the ‘search for an ‘inventive concept’’
that ‘’transform[s]’ the claimed abstract idea into a patent-eligible application.”

“The majority gives short shrift to the Supreme Court’s instruction that in step two we must ‘consider the elements of each claim both individually and ‘as an ordered combination.’ The Supreme Court explained that this approach ‘is consistent with the general rule that patent claims ‘must be considered as a whole.’”

Judge Stoll said claim 7 is eligible as an ordered combination. “While the network components and virus screening software recited by the claim may themselves be conventional, ‘an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

—To reach the reporter responsible for this story please contact Dan Lonkevich at 707 318-7899 or