An ordered set of steps the specification explains as a security improvement is an inventive concept at step two

2021-10-04Fed. Cir.

CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC, 15 F.4th 1091, No. 2020-2043 (Fed. Cir. Oct. 4, 2021) (precedential) (Stoll, J., joined by O'Malley, J.; Reyna, J., concurring), reversing a judgment on the pleadings of ineligibility by the United States District Court for the District of Delaware, No. 1:18-cv-01477-CFC (Connolly, J.)

United States Patent No. 9,246,903, titled "Authentication Method," claims authenticating a user who identifies himself at a terminal by means of a mobile device on a second communication channel, where the authentication function on the device is normally inactive, is activated by the user only preliminarily for the transaction within a predetermined time relation to the transmission of the user identification, reports through the second channel that it is active, and is thereafter automatically deactivated. The district court entered judgment on the pleadings under Rule 12(c) that the claims are directed to the abstract idea of verifying identity to permit access to transactions and that the patent admits the steps are conventional. The Federal Circuit reversed in an opinion by Judge Stoll. Without deciding step one, the court held at step two that the four ordered steps are not conventional, that the passage the district court read as an admission describes three prior art references none of which teaches the recited steps, and that the specification explains how the particular arrangement of steps increases security, prevents a third party from impersonating the user and works on simple devices. Judge Reyna concurred, writing that the claims should have been held eligible at step one and that resolving the case at step two without a step one analysis is contrary to Supreme Court precedent.

What it changesThe patent won because the specification did three things the claim could borrow: it named the prior approaches, it said exactly what the claimed ordering of steps changes, and it stated the technical consequences, higher security and a simpler device. Machine learning applications should be written the same way. The background should describe the conventional pipeline in specific terms, the detailed description should state which step is placed where and why that placement matters, and the advantages should be expressed as properties of the system, latency, memory, false-positive rate, resistance to a named attack, rather than as business outcomes. The claim should track that language so the court can map claim to specification as it did here. The decision also shows the cost of an unguarded background section: a paragraph reciting the prior art nearly became an admission that the invention was conventional. The case is precedential, but the procedural posture was a motion on the pleadings where inferences ran for the patentee.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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