Decision By Federal Circuit In The Tecsec V. Adobe

TecSec v. Adobe, Appeal Nos. 2019-2192 and 2019-2258 (Fed. Circ. 2020), decided October 23, 2020, provides an opinion by the Federal Circuit on interpretation of the “Step 1” analysis established in Alice. This opinion places increased emphasis on interpreting the specification in order to determine the focus of the claimed advance over the prior art. Although the case offers some guidance on this highly contested area of law, there remains significant grey area likely leading to further litigation.

The Court of Appeals approached the Step 1 “directed to” inquiry by asking what the patent asserted to be the focus of the claimed advance over the prior art. For analysis of patents involving software, the Federal Circuit noted that the invention should improve the functioning of a computer rather than simply using the computer as a tool.

In conducting that inquiry, the court decided to focus on the language of the asserted claims, considered in light of the specification. The claims at issue in the case involved systems and methods for multi-level security of files transmitted in a data network.

According to the Federal Circuit:

“As to the combination of labeling with the required encryption, the specification makes clear that this is part of the focus of the claimed advance. The specification expressly identifies a deficiency of using only multilevel security through encryption requiring keys at more than one level: that approach, the specification says, “is quite unwieldy, inflexible, and difficult to manage by a security officer or key administrator.” ’702 patent, col. 2, lines 25–29. The specification then explains that it proposes a solution in which “[a] secure method of labeling files or messages that are sent from a sending user to a receiving user over a network” is used “in addition to cryptographic protection.”

The Federal Circuit concluded that the claims were directed to an improvement involving both labeling and encryption. This conclusion was supported by the specification which made clear that the focus of the claimed advance was on the improvement of the functioning of the computer rather than simply using the computer as a tool.

The following is a diagram of the subject matter eligibility test provided in MPEP 2106:
TecSec v. Adobe