In Simio, LLC v. FlexSim Software Products, Inc.,1 the Federal Circuit held that an invention that improved a user’s experience while using a computer application was not sufficient to comprise an improvement in computer functionality and therefore was not patent eligible.
Simio, LLC, sued FlexSim Software Products, Inc., for infringing U.S. Patent No. 8,156,468 (the ’468 patent). The ’468 patent was titled “System and Method for Creating Intelligent Simulation Objects Using Graphical Process Descriptions” and directed to an object-oriented simulation programming tool that enabled users to develop simulation models of process flows using a graphical framework.2
The invention made object-oriented simulation development simpler and more available by allowing users to create simulations with graphics without having to do any programming.3
Claim 1 recited the following:
A computer-based system for developing simulation models on a physical computing device, the system comprising:
one or more graphical processes;
one or more base objects created from the one or more graphical processes,
wherein a new object is created from a base object of the one or more base objects by a user by assigning the one or more graphical processes to the base object of the one or more base objects;
wherein the new object is implemented in a 3-tier structure comprising:
an object definition, wherein the object definition includes a behavior,
one or more object instances related to the object definition, and
one or more object realizations related to the one or more object instances;
wherein the behavior of the object definition is shared by the one or more object instances and the one or more object realizations; and
an executable process to add a new behavior directly to an object instance of the one or more object instances without changing the object definition and the added new behavior is executed only for that one instance of the object.4
FlexSim filed a motion to dismiss the lawsuit, contending that the claims were not patent eligible under 35 U.S.C. Section 101.5 The district court employed the two-step framework described in Alice Corp. Pty. Ltd. v. CLS Bank International and ruled the claims were not patent eligible. The district court therefore granted FlexSim’s motion to dismiss.6
Simio appealed, and the Federal Circuit affirmed. The court noted that 35 U.S.C. Section 101 states that patent-eligible subject matter is “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”7
At step one of Alice’s two-step framework, we “determine whether the claim[ ] at issue [is] directed to” an abstract idea. . . . If so, we move to step two, where we “examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.”8
Under step one, the court determines the emphasis of the claimed improvement over the prior art to determine whether the claim as a whole is aimed at patent-eligible subject matter.9
The court observed that the ’468 patent describes its key improvement as using graphics in place of technical programming to produce object-oriented simulations. It explained, however, that the claim was directed to the use of conventional graphical processing technology in a well-known object-oriented environment without any indication that the invention provided an inventive solution.10 Accordingly, the court agreed with FlexSim that the claim encompassed the abstract idea of using graphics in place of programming to produce object-oriented simulations.11
Simio contended, however, that claim 1 did not encompass an abstract idea since it improved computer-implemented simulations, creating advances in the computers’ capabilities. The court rejected this argument because Simio had not shown how claim 1 was directed to improving a computer’s functionality.12 For instance, Simio asserted that the claim enhanced the functionality of prior simulation systems by using graphical or process modeling flowcharts without having to write any programming code. The court disagreed:
But this argument does not explain how the computer’s functionality is improved beyond the inherent improvement of the experience of a user who cannot (or maybe, would rather not) use programming. In this case, improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality.13
Simio also argued that claim 1 enhanced a computer’s functionality by using a new customized simulation modeling method with faster processing speed. FlexSim answered, however, that this purportedly increased processing speed was not that of the computer, but only a user’s ability to create simulation models faster by using graphics in place of programming computer software. The court rejected Simio’s argument because claiming the improved speed inherent in using the abstract idea on a computer was not enough to make the claims patent eligible as an improvement to computer functionality.14
Simio lastly stressed that the executable-process claim limitation described an improvement to computer functionality, reciting the following:
an executable process to add a new behavior directly to an object instance of the one or more object instances without changing the object definition and the added new behavior is executed only for that one instance of the object.15
The Federal Circuit concluded that this claim element did not change the claim’s overall character from being abstract. The court reasoned that the specification backed this conclusion because it provided comparatively little description of the functionality recited in the executable-process claim language. Accordingly, the court held that the focus of the claimed improvement resided in the abstract idea and proceeded to the second step of Alice.16
At Alice step two, the court explained, the claim elements are analyzed, both individually and as an ordered combination, to determine whether the additional claim elements transform the character of the claim into patent-eligible subject matter. The transformation of the claim into patent-eligible subject matter involves more than merely reciting the abstract idea while appending the words “apply it” to the claim.17
The court observed that Simio acknowledged that the claimed functionality recited in the executable-process element was conventional in object-oriented programming. The court explained:
In other words, while Simio acknowledges that implementing the executable process’s functionality through programming was conventional or known, it contends that doing so with graphics in a simulation provides the inventive concept necessary to confer eligibility. But what Simio relies on is just the abstract idea itself, which cannot supply the inventive concept that renders the invention significantly more than that abstract idea at step two.18
The court further elucidated:
And that’s really what we have: a claim directed to the idea of using graphics instead of programming to create object-oriented simulations—maybe a new idea, but still an abstract one—and lacking any inventive concept, any meaningful application of this idea, sufficient to save the claim’s eligibility.19
The court therefore affirmed the district court’s dismissal of the litigation because the claims failed to recite patent-eligible subject matter.20
Lessons:
The Federal Circuit continues to place an emphasis on the patent specification as part of the determination of whether a claim recites patent-eligible subject matter. The court explained that descriptions of software functionality need to explain not just how to use the computer functionality but also how the computer’s functionality is improved. The court instructed that in this case, “improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality.
The court also cautioned about relying on the abstract idea itself because it cannot be used alone to supply the inventive concept such that the invention is considered significantly more than an abstract idea at Alice step two. However, in this case, the court remarked that was what was being claimed—just the idea of using graphics instead of programming to create object-oriented simulations: maybe a new idea, but still abstract and not possessing a patent-eligible inventive concept or any meaningful application of this abstract idea. The court noted that the patent specification had a “heavy focus” on the abstract idea with comparatively little description of the purported improvement. On the flip side, patent applicants should consider whether the patent specification should minimize or omit descriptions relating to a possibly abstract idea. Thus, the Simio, LLC v. FlexSim Software Products, Inc. decision is another warning to patent applicants that computer programmed functionality inventions, in particular, require significant attention to details when drafting the specification and claims to emphasize the technical character of the invention that implements the computer functionality.
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law. Irah was also a software developer and former Member of Technical Staff at Bell Communications Research (Bellcore).
1 Simio, LLC v. FlexSim Software Products, Inc., 983 F.3d 1353, 2020 USPQ2d 11538, 2020 WL 7703014 (Fed. Cir. 2020).
2 Id., 983 F.3d at 1356.
3 Id., 983 F.3d at 1356.
4 Id., 983 F.3d at 1357 (quoting U.S. Patent No. 8,156,468).
5 Id., 983 F.3d at 1357.
6 Id., 983 F.3d at 1357-58.
7 Id., 983 F.3d at 1359 (quoting 35 U.S.C. § 101).
8 Id., 983 F.3d at 1359 (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 218, 221, 110 USPQ2d 1976, 1981, 1982 (2014)).
9 Id., 983 F.3d at 1359 (quoting Affinity Labs of Tex. LLC v. DIRECTV LLC, 838 F.3d 1253, 1257-58, 120 USPQ2d 1201, 1204 (Fed. Cir. 2016)).
10 Id., 983 F.3d at 1360 (citing In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612, 118 USPQ2d 1744, 1747 (Fed. Cir. 2016)) (holding claims directed to an ineligible abstract idea, as opposed to an eligible improvement in computer functionality).
11 Id., 983 F.3d at 1360.
12 Id., 983 F.3d at 1361.
13 Id., 983 F.3d at 1361 (quoting Customedia Techs. LLC v. Dish Network Corp., 951 F.3d 1359, 1365, 2020 USPQ2d 10121, at *6 (Fed. Cir. 2020)) (quotation marks omitted).
14 Id., 983 F.3d at 1361 (quoting Customedia Techs. LLC v. Dish Network Corp., 951 F.3d 1359, 1364, 2020 USPQ2d 10121, at *5 (Fed. Cir. 2020)).
15 Id., 983 F.3d at 1362 (quoting U.S. Patent No. 8,156,468, claim 1).
16 Id., 983 F.3d at 1362-63.
17 Id., 983 F.3d at 1363 (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014)).
18 Id., 983 F.3d at 1363-64 (quoting BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290, 127 USPQ2d 1688, 1695 (Fed. Cir. 2018)) (quotation marks omitted and emphasis added by court).
19 Id., 983 F.3d at 1364 (emphasis added by court) (citing BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290-91, 127 USPQ2d 1688, 1695 (Fed. Cir. 2018) (“If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.”)).
20 Id., 983 F.3d at 1367.