Is the CAFC’s Finjan an Important New Tool in Alice/101 Analysis?

United States Court of Appeals for the Federal Circuit | CAFC.USCOURTS.GOV
The lower court’s claim construction seems pretty important here: “Claim 1 of the ’844 patent scans a downloadable and attaches the virus scan results to the downloadable in the form of a newly generated file: a “security profile that identifies suspicious code in the received Downloadable.” The district court’s claim construction decision emphasiz- es that this “identif[y] suspicious code” limitation can only be satisfied if the security profile includes “details about the suspicious code in the received downloadable, such as . . . ‘all potentially hostile or suspicious code operations that may be attempted by the Downloadable.’” Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2014 WL 5361976, at *9 (N.D. Cal. Oct. 20, 2014). The security profile must include the information about potentially hostile operations produced by a “behavior-based” virus scan. This operation is distinguished from traditional, “code-matching” virus scans that are limited to recogniz- ing the presence of previously-identified viruses, typically by comparing the code in a downloadable to a database of known suspicious code. The question, then, is whether this behavior-based virus scan in the ’844 patent consti- tutes an improvement in computer functionality. We think it does.”

FINJAN, INC. V. BLUE COAT SYSTEMS, INC. | KNOBBE
“With respect to patent-eligibility, the Federal Circuit affirmed the district court’s finding that the claims were not directed toward an abstract idea for two reasons. First, the claims were drawn to behavior-based virus scanning which analyzes a downloadable’s code and determines whether it performs potentially dangerous or unwanted operations. This was different than the traditional method of code-matching virus scanning. The Federal Circuit determined that this was an improvement in computer functionality. Second, the results of the behavior-based virus scan are attached to a new type of file which enables a computer security system to perform tasks that it could not do before. Also, the claims recited more than a mere result and provided specific steps of generating a security profile that identifies suspicious code and links it to a downloadable. ”

Broad Software Patent Claims Survive Alice, Federal Circuit | B2IPREPORT
Subjective analysis? “Specifically, the claimed method uses a security profile to match suspicious details to details detected in code of a ‘Downloadable, i.e., an executable computer program. The security profile had to include specific information. Because of this, the claimed method was distinguishable from conventional ‘code-matching by rescanning because it could do more than recognize known viruses. Finjan ‘pioneered this ‘behavior-based approach that included analyzing downloadable code for ‘potentially dangerous or unwanted operations. Further, the claimed approach ‘enables more flexible and nuanced virus filtering’ … Specifically, the claimed method here ’employs a new kind of file that enables a computer security system to do things it could not do before…Blue Coat argued that even if ‘the claims are directed to a new idea . . . they remain abstract because they do not sufficiently describe how to implement that idea. In response, the court explained that ‘a foundational patent law principle is ‘that a result, even an innovative result, is not itself patentable. But the claims here recited ‘more than a mere result. The patent claims here recited ‘specific steps – generating a security profile that identifies suspicious code and linking it to a downloadable – that accomplish the desired result. The claims were non-abstract under step one of the Alice test.”

Finjan Inc. v. Blue Coat Systems | FR
District court ruling summary and link to opinion: “Posture: Findings of fact and conclusions of law after a bench trial on, inter alia, a challenge to validity under 101.
Abstract Idea: No; ‘The Court finds the claim at issue to be similar to the hypothetical claim in the Patent Office’s guidance.”

An Ounce of Prevention: Patent Claiming Anti-Malware Software Is Not Abstract | BLOGS.ORRICK
District court looked at the USPTO Guidance, CAFC did not… “Specifically, Finjan cited to a hypothetical claim from the Patent Office’s guidance which is similar to Finjan’s patent claim and in which the Patent Office concluded that such a claim is not an abstract idea. The Patent Office analyzed a hypothetical claim covering ‘Isolating and Removing Malicious Code from Electronic Messages and concluded that such a claim is not directed to an abstract idea because it relates to software technology for isolation and extraction of malicious code contained in an electronic communication. Likewise, Judge Freeman concluded, claim 1 of the ’844 Patent is directed towards performing steps leading to identifying malicious code to create a new data file containing a security profile. This claim is ‘rooted in computer technology as its covers the identification of suspicious code which do not have significance outside the realm of computer technology. Accordingly, the Court held that the ’844 Patent is not directed to an abstract idea.”