User Interfaces: Navigating the Patent Eligibility Landscape

Article co-written by Yuri Levin-Schwartz, Ph.D., a law clerk at MBHB.

User interface technology at its core enables user interaction with underlying digital systems or other technology. Whether through use of visual elements, speech interaction, touch, or other mechanisms, a well-designed user interface will make the user interaction smooth, efficient, intuitive, and productive, providing user-friendly and seamless communication between the user and the underlying technology.

Advances in user interface design can also provide key competitive differentiation and advantage, helping to distinguish otherwise commoditized products and services such as computers, web services, wearables, appliances, and the like. Given this advantage, protecting advances in user interface design can also be critically important from a business perspective.

Intellectual property law provides various forms of protection for user interface design, ranging from trademark and copyright for protecting brand identity and original creative expression in the design, to design patent for protecting innovative ornamental design features (including both static and animated features), to utility patent for protecting utilitarian, functional aspects of the user interface.

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 user interface designs include or make use of what is now fundamentally known technology, such as basic touch-screen and voice interaction mechanisms. At issue under the law is then whether there is sufficiently more to such a user interface design to make it patent-eligible.

Claims must routinely survive the Supreme Court’s two-step Alice Corp. framework to be found patent-eligible under 35 U.S.C. § 101. Under this two-step 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.[1] Then, if the claim is directed to one of the judicial exceptions, one must determine whether any element or combination of elements in the claim recites significantly more than the judicial exception.[2]

When determining whether the claim is directed to a judicial exception, one must identify any claim elements that go beyond the judicial exception, and determine whether those elements are well-understood, routine, and conventional activities. For instance, while a claim may contain an abstract idea, and may contain other known components or features, the claim as a whole may still contain a non-routine or unconventional combination of elements and may thus be found to be patent-eligible.

But the Alice battle is typically won or lost based on step two. 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 and does so in an innovative manner.[3] 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.[4]

These principles apply to advances in user interface technology and may parallel some of the design goals noted above. From a design perspective, user interfaces should be useful and technologically innovative. So too from a patent-eligibility standpoint, the focus should be on key, innovative, technological advances of the user interface, rather than fundamental user interface design elements.

In seeking patent protection for a user interface invention, it is important to emphasize the technological problem addressed by the user interface and the innovative technological solution that the user interface provides. Key factors here include establishing that the user interface advance is rooted in technology and establishing that the advance is innovative.

For example, in DDR Holdings, LLC v., L.P.,[5] the invention related to generating a composite webpage by combining elements of a host website with third-party merchant content. The invention helped prevent a host web provider from losing its interaction with a user when the user clicks on a third party’s ad. To achieve this, the invention presented the third party’s content but retained the host’s look and feel based on stored indications of user interface components such as logos, colors, frame, mouse-over events, and so forth.

The DDR court found that, even though the claims involved both a computer and the Internet, they did not merely recite a pre-Internet business process with a requirement to perform the process on the Internet, but rather that the claimed solution was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” (where a user would be instantly transported away from the host upon clicking on a third-party ad).[6] As such, the court noted that the invention “overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.”[7]

Going beyond mere mouse clicks, hyperlinks, and other fundamentally known computer and Internet features, the user interface in DDR is a good example of non-abstract focus on overcoming a specific technological problem and achieving a specific technological result in an innovative manner, to help establish patent-eligibility.

In contrast, in West View Research, LLC v. Audi AG,[8] the invention in question was directed to a computerized apparatus for interactive information exchange with a human user through conventional user interface components and an apparatus for receiving user input, tailoring keys based on user selection, and presenting selected content to the user. The West View court found that the claims were directed to an abstract idea with generic computer implementation, involving use of conventional elements at a high level of generality.[9] Therefore, the court found that there was not a sufficient inventive concept.[10] Had the inventions in West View focused more on innovative technological advances that went beyond fundamentally known user interface features, the result might have been different.

Likewise, in Affinity Labs of Texas, LLC v. Inc.,[11] the invention was directed to communicating targeted information to a user, or more particularly to “a network-based media system with a customized user interface, in which the system delivers streaming content from a network-based resource upon demand to a handheld wireless electronic device having a graphical user interface.” In seeking to establish that the invention was technologically concrete, the patent owner in Affinity Labs argued that the claimed invention embodied technological features of wireless streaming of media and of a customized user interface.[12] But the court found that both of those features were very well known and that such fundamental technologies were insufficient to establish that the invention was not directed to an abstract idea.[13]

Similarly, in Apple, Inc. v. Ameranth, Inc.,[14] the claims were directed to generating and transmitting menus, where menus are stored and displayable on a graphical user interface and where an application program allows generation and transmitting of a new menu based on user selections from the displayed menus. On appeal from a decision of the Patent Trial and Appeal Board, the court found that the claims were directed to an abstract idea, on grounds that “[t]hey do not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claim the resulting systems.”[15] Further, the court found that the claims do not transform the abstract idea into patent-eligible subject matter, as the claims merely add conventional computer components to well-known business practices.[16]

Along these lines, the Federal Circuit has also emphasized the importance of both claiming and describing in the patent application sufficient technological details, to help establish and support how the invention is rooted in technology and provides a sufficiently specific, innovative advance to be patent-eligible.

For instance, in DDR, the court reviewed various earlier cases and noted that in many of those cases the “claims were recited too broadly and generically to be considered sufficiently specific and meaningful applications of their underlying abstract ideas.”[17] Against that background, the DDR court then found that the claims at issue recited sufficiently detailed features, supporting a conclusion that claimed solution was necessarily rooted in computer technology to overcome a specific technological problem.[18]

Similarly, in Affinity Labs, the court found that the claim was written in largely functional terms, claiming a “a collection of instructions” that perform the functions of displaying a selection of available content on a graphical user interface and allowing the user to request streaming of that content.[19] Further, the court noted that the patent did not disclose any particular mechanism to achieve a particular solution to the identified problem, but that the patent rather provided just a high-level functional description. Such high-level description and claiming, the court held, were insufficient to convert the abstract idea of delivering media content to a handheld device into a concrete solution to a problem.[20] Therefore, the court held the claimed invention to be patent-ineligible.[21]

As yet another example, in Move, Inc. v. Real Estate Alliance,[22] the Federal Circuit struck down claims relating to a user interface for geographically searching for real estate properties on a computer. This invention, which included a zoom feature for zooming in on a displayed map in order to identify available real estate located within the zoomed-in area, was viewed by the court as merely using computers to serve a conventional purpose.[23] The claim steps were recited at a high level as performed by generic hardware components and, as in Affinity Labs, the court found that the claims were too general and that the specification did not provide sufficient details about the technical advance.[24] No doubt more detailed claims and descriptions would have given the invention a fighting chance.

And similarly, in Internet Patents Corp. v. Active Network, Inc.,[25] the Federal Circuit found that the patent at issue lacked a sufficient description of the claimed improvement, thus supporting a conclusion that the invention was patent-ineligible. The invention was directed to a web browser that retains information that a user has typed into form, so that the user can navigate away from and back to the form without needing to retype the information.[26] After concluding that the invention is directed to an abstract idea including the known concept of navigation back and forth between web pages, the court found that the patent did not describe how to achieve the recited and apparently essential feature of saving page state.[27] Therefore, the court concluded that the claimed invention was really just directed to “the idea itself—the abstract idea of avoiding loss of data.”[28] Here too, had the patent owner described or claimed more technological details about structure and operation of the user interface, the result may have been different.

Most recently, the Federal Circuit has highlighted efficiency of the user interface invention as a representative, sufficient technological advance. For example, in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.,[29] the Federal Circuit emphasized how the claimed user interface makes information easier to access on computing devices. The invention was directed to a manner of summarizing and presenting information on computing devices by requiring a particular access window and restraining the type of information that is presented.[30] The Federal Circuit noted how generic, conventional, and inefficient prior art user-interface methods diminished the user experience by requiring scrolling, drilling down, and/or switching views to find information, whereas the claimed user interface improved on the prior art by providing a specific manner of displaying a limited set of information to the user.[31] The Federal Circuit particularly liked a description in the patents explaining how the claimed interface improved the functioning of computers with small screens.[32]

Likewise, in Trading Technologies Int’l, Inc. v. CQG, Inc.,[33] the claims were directed to displaying information relating to and facilitating trading of commodity, with bid and ask regions each adjacent to a common static price axis in a manner that facilitated more accurate order placing. Applying the Alice analysis, the court found that the claimed invention was directed to a specific improvement in the way computers operate, as the user-interface method imparted a specific functionality to a trading system “directed to a specific implementation of a solution to a problem in the software arts.”[34]

Based on these recent cases, a reasonable approach in seeking to patent user interface innovations would be to focus on interface features and functionality that improve technological efficiency. Further, as the other cases above suggest, it would be best to tie otherwise abstract (e.g., well-known) user interface features to solving an identified problem, and to describe and recite sufficient details to establish how the user interface design provides a non-abstract, innovative technological advance.

[1] Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014).

[2] Id.

[3] See, e.g., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).

[4] Alice Corp., 134 S. Ct. at 2358.

[5] 773 F.3d 1245 (Fed. Cir. 2014).

[6] Id. at 1257.

[7] Id. at 1258.

[8] 685 F. App’x 923 (Fed. Cir. 2017).

[9] Id. at 927.

[10] Id.

[11] 838 F.3d 1266, 1268 (Fed. Cir. 2016), cert. denied, 137 S. Ct. 1596 (2017).

[12] Id. at 1269.

[13] Id. at 1271-72.

[14] 842 F.3d 1229 (Fed. Cir. 2016).

[15] Id. at 1241.

[16] Id. at 1242.

[17] DDR Holdings, 773 F.3d at 1256.

[18] Id. at 1256-59.

[19] Affinity Labs, 838 F.3d at 1271.

[20] Id.

[21] Id. at 1272.

[22] No. 2017-1463, 2018 WL 656377 (Fed. Cir. Feb. 1, 2018).

[23] Id. at *4.

[24] Id.

[25] 790 F.3d 1343 (Fed. Cir. 2015).

[26] Id. at 1344-45.

[27] Id. at 1348.

[28] Id.

[29] 880 F.3d 1356 (Fed. Cir. 2018).

[30] Id. at 1359.

[31] Id. at 1363.

[32] Id.

[33] 675 F. App’x 1001 (Fed. Cir. 2017).

[34] Id. at 1006 (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)).


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