Patent Eligibility of User Interfaces

As to utility patent protection, recent developments in the law have raised issues regarding the patenting of inventions that include what might be considered “abstract” features, broadly interpreted as encompassing longstanding, fundamentally known technology. Arguably, at some level, many UI designs include or make use of fundamentally known technology, such as basic touch-screen and voice interaction mechanisms. At issue is then whether such a UI design has sufficiently more to make it patent-eligible.

Claims must routinely survive the Supreme Court's two-step framework set out in Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014) to be found patent-eligible under 35 U.S.C. §101. Under this framework, one must first determine whether the claim as a whole is directed to one of three judicial exceptions: a law of nature, a natural phenomenon, or an abstract idea. If so, then one must determine whether any element or combination of elements in the claim recites significantly more than the judicial exception.

Courts have found that claims recite “significantly more” than a judicial exception, and are thus patent-eligible, when the claimed invention improves a computer or technological process in an innovative manner. On the other hand, a generic, computer-based implementation of an abstract process is not enough to elevate a claim to a level of patent-eligibility.

These principles apply to advances in UI technology and may parallel some of the above-noted design goals. From a design perspective, UIs should be useful and technologically innovative. Similarly, for patent-eligibility, the focus should be on key, innovative, technological advances, rather than fundamental UI design elements.

Important issues when seeking patent protection for a UI invention are the technological problem addressed by the UI and the innovative technological solution that the UI provides, such as how the UI advance is innovative and rooted in technology.

For example, in DDR Holdings v. Hotels.com, 773 F.3d 1245 (Dec. 4, 2014), the invention helped to retain a host Web provider's interaction with a user by presenting third-party content with the host provider's look and feel when the user clicks on the third party's ad. Finding that the invention overrode a conventional sequence of events triggered by clicking a hyperlink, the court found that the invention did not merely automate a pre-Internet business process but rather was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” and was therefore patent-eligible.

In contrast, inventions that do not go beyond fundamentally known UI features are routinely found to be ineligible. For example, in West View Research v. Audi AG, et. al., 685 Fed. Appx. 923 (2017), the court found that two inventions, one for interactive information exchange with a user and another for adaptively providing content in response to user input, were patent ineligible because each involved no more than generic UI components, such as a display, a touch-screen input, and a microphone. Likewise, in Affinity Labs v. Amazon, 838 F.3d 1266 (2016), the court found that a customized UI for receiving streaming media on a wireless device was fundamentally known and insufficient to establish patent eligibility. And in Apple v. Ameranth, 842 F.3d 1229 (2016), the court found that an invention involving generating and transmitting a new menu based on user selections from displayed menus did not involve a particular way to achieve those results and was therefore ineligible.

The Federal Circuit has also emphasized the importance of both claiming and describing in the patent application sufficient technological details to establish and support how the invention is rooted in technology as a specific and meaningful application of an underlying abstract idea rather than a broad and generic concept.

For instance, in Affinity Labs, the court found that the claim and description were too high-level, reciting “a collection of instructions” to perform functions, and without disclosing any particular mechanism to solve a problem. Further, in Move v. Real Estate Alliance, 721 Fed. Appx. 950 (2018), the court found that claims directed to zooming in on a displayed map to identify available real estate merely involved computers for a conventional purpose, reciting steps at a high level and not describing sufficient technical details. Similarly, in Internet Patents v. Active Network, 790 F.3d 1343 (2015), the court found that claims directed to saving information that a user entered into a form, to allow navigation back to the filled form, were ineligible because the patent did not describe how to achieve the recited and apparently essential feature of saving page state and therefore that the invention was just directed to “the idea itself.”

The Federal Circuit has also highlighted efficiency of UI inventions as a representative, sufficient technological advance. For example, in Core Wireless v. LG Electronics, 880 F.3d 1356 (2018), the court found that an invention directed to summarizing and presenting information on devices improved over inefficient UI methods that required scrolling, drilling down, and/or switching views to find information and was therefore eligible. Likewise, in Trading Technologies v. CQG Inc., 675 Fed. Appx. 1001 (2017), the court found that claims involving displaying “bid” and “ask” regions in a specific manner that facilitated more accurate order placing were eligible.

Conclusion

Given these cases, a reasonable approach in seeking to patent UI innovations would be to focus on features and functionality that improve technological efficiency. Further, it would be best to tie otherwise well-known UI features to solving an identified problem, and to describe and recite sufficient details to establish how the UI design provides a non-abstract, innovative technological advance.

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Lawrence H. Aaronson is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm's Telecommunications Practice Group. Mr. Aaronson's practice has grown over the years to focus primarily on patent prosecution, with a strong emphasis on telecommunications and software technology including cellular wireless communications and computing systems. James L. Korenchan is an associate with McDonnell Boehnen Hulbert & Berghoff LLP. He has over six years' experience drafting and prosecuting patent applications in numerous technical fields, with a specialty in the areas of electrical engineering and computer hardware and software.