Patent Drafting Post-Alice: Broadly Define The Problem, And Narrowly Claim The Solutions

The notion of strategic claim drafting, which experienced patent practitioners understand, is all about writing specific, narrowly defined claims to cover the strategically important "choke points" in a value chain.¹ The rationale is that the narrowness of the claim makes it less vulnerable to a validity attack on prior art grounds. In the discussion below, I first review the recent decision in SRI International Inc. v. Cisco Systems Inc., and then I discuss how a similar strategically narrow drafting approach can be effective in diverting a § 101 attack on claims directed to software-related inventions.

In SRI International Inc. v. Cisco Systems Inc.,² the court denied defendant's motion for summary judgment that the asserted claims of plaintiff's network security patents encompassed unpatentable subject matter, and found that the claims were not directed to an abstract idea. The patents in suit, U.S. Patent Nos. 6,711,615 (the '615 patent) and 6,484,203 (the '203