Since the June 2014 U.S. Supreme Court decision in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the vast majority of district court decisions, Federal Circuit decisions, and Patent Trial and Appeals Board (PTAB) decisions that considered the issue have overturned software and business method patents under the new patent-eligibility standard of Alice.
While many of the early cases explained why the specific claims failed to satisfy patent-eligibility requirements, for the most part the early cases provided little guidance to help the patent community identify what types of claims would be patent-eligible.
On December 16, 2014, the USPTO issued an Interim Guidance document on the topic. The Interim Guidance summarized the cases that upheld patents as of that date. It also included some hypothetical claims that could be considered to be patent-eligible. The Interim Guidance started to break the post-Alice logjam at the USPTO, and it gave applicants and Examiners the ability to move some cases forward. In July 2015, the USPTO issued a Subject Matter Eligibility Update with additional examples and caselaw summaries. The USPTO issued a second Subject Matter Eligibility Update in May 2016.
However, in certain areas — notably USPTO Technology Center 3600 — applicants still have a difficult time overcoming patent-eligibility rejections, even when they submit claims that are closely aligned with the examples of the Interim Guidance. Instead, applicants often find themselves simply trying to place cases in a better position for appeal.
To prepare for this process, patent applicants can find some insight from the growing number of court and PTAB decisions that declined to overturn patent claims. A summary of those cases, with links to the cases and patents, follows:
Federal Circuit Decisions:
- In January 2017, the Federal Circuit published a non-precedential decision that may not be cited as precedent, but which nonetheless helps illustrate when financial business method inventions may be considered patent-eligible. In Trading Technologies International, Inc. v. CQG, Inc., the court considered two patents claiming methods and systems for electronic trading of stocks, bonds, futures, options and similar products. The patents’ claims focused on how an electronic system presented the trading information to a user. The court found that the claims were not directed to an abstract idea: “The district court explained that the challenged patents do not simply claim displaying information on a graphical user interface. The claims require a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art.” The Federal Circuit agreed with this conclusion. The court also agreed that the claims included other inventive concepts, such as a “static price index … that allows traders to more efficiently and accurately place trades using this electronic trading system.”
- In Amdocs (Israel) Limited v. Openet Telecom Inc. (Nov. 1, 2016), the court upheld patent-eligibility of a group of four related patents directed to methods that enable network service providers to account and bill customers for Internet protocol communications. The court began its analysis by noting that there is no generally-accepted and understood definition of “abstract idea,” and it declined to create one in this case. Instead, the court said that courts must examine past cases and how they were decided. The court then reviewed a representative claim:
1. A computer program product embodied on a computer readable storage medium for processing network accounting information comprising:
computer code for receiving from a first source a first network accounting record;
computer code for correlating the first network accounting record with accounting information available from a second source; and
computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.
The court noted that it had previously found facially similar claims to lack patent eligibility. However, in this case the court relied on a previous claim construction of the word “enhance”as meaning “to apply a number of field enhancements in a particular fashion.” More specifically, the court stated that “[i]n other words, this claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Although the hardware involved was limited generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.”
The court reached a similar conclusion about the representative claims of the other patents at issue, in each case finding that the claims “recite a technological solution to a technological problem”
- In McRO, Inc. v. Bandai NAMCO Games America, Inc. (Sept. 13, 2016), the court assessed whether claims directed to a method of automatically animating lip synchronization and facial expression of 3D characters is patent eligible. The claims included limitations such as “obtaining rules that define an output morph weight set stream as a function of phoneme sequence and time of the sequence,” and “generating a final stream of output morph weight sets at a desired frame rate.” The court cautioned that reviewers must “’avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims…. Whether at step one or step two of the Alice test, in determining patentability of a method, a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.” The court also noted that it is important to distinguish between claims directed to a result, rather than claims directed to specific methods of accomplishing the result: “a patent may issue ‘for the means or method of producing a certain result, or effect.’” In the claims at hand, however, the court found that “[b]y incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process … and does not preempt approaches that use rules of a different structure or different techniques.”
- In Bascom Global Internet Services, Inc. v. AT&T Mobility et al. (June 27, 2016), the court reversed a district court finding that claims directed to a content filtering system were not patent-eligible. The patent at issue covered a system by which a remote ISP server filters content that a client computer requests from a website. The court did agree with the district court’s finding that the claims at issue may be directed to an abstract idea. However, when addressing step two of the Alice analysis, the Federal Circuit noted that “[t]he claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or perform it on a set of generic computer components…nor do the claims preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.” The court also cautioned against confusing patent-eligibility with obviousness: “The district court’s analysis in this case … looks similar to an obviousness analysis under 35 U.S.C. 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”
- In Enfish Corporation v. Microsoft LLC (May 12, 2016), the court reversed a district court’s ineligibility determination for two patents directed to database structures. In the decision, the Federal Circuit stated: “We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract…. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis.” With this in mind, the Federal Circuit directed that “the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” The patents at issue were US patents 6,151,604 and 6,163,775. Because the claims involved a specific structure of a logical table in a database, and were “not simply directed to any form of storing tabular data, but instead are directed to a self-referential table for a computer database,” the court found that the claims were directed to an improvement in the functioning of a computer.
- In DDR Holdings, LLC v. Hotels.com, L.P. (Dec. 5, 2014), the Federal Circuit considered an eligibility challenge to a patent covering a method by which an operator of one website can recognize the source of a link from which a consumer reached the website. Notably, the court did not address whether the claims were directed to an abstract idea. Instead, the court stated that the “claims do not recite a mathematical algorithm. Nor do they recite a fundamental economic or longstanding commercial practice. Although the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet. Indeed, identifying the precise nature of the abstract idea is not as straightforward as in Alice or some of our other recent abstract idea cases.” Perhaps because of this difficulty, the court moved directly to step 2 of the Alice analysis and found the claims to include significantly more than an abstract idea. In particular, the court said that “these claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The court concluded that “instead of the computer network operating in its normal, expected manner by sending the website visitor to the third-party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to t[a] hybrid web page that presents product information from the third-party and visual ‘look and feel’ elements from the host website. When the limitations of the … patent’s asserted claims are taken together as an ordered combination, the claims recite an invention that is not merely the routine or conventional use of the Internet.”
Patent Trial and Appeal Board Decisions:
- In Plaid Technologies, Inc. v. Yodlee, Inc. (Case No. CBM2016-00045, Aug. 23, 2016), the Board declined to institute a covered business method (CBM) review of U.S. patent 6,317,783, which is directed to a method for delivering information via a wide-area computer network. Claim 1 of the patent read:
A method for delivering non-public personal information relating to an end user via a wide-area computer network to an end user from at least one of a plurality of information providers securely storing the personal information under control of a processor located remotely from the information providers and the end user, the method comprising the steps of:
(a) the processor connecting with at least one information provider;
(b) for a selected end user, the processor retrieving personal information for the selected end user from the connected at least one information provider based on end user data associated with the selected end user and information provider data associated with the connected one or more information providers, the end user data including information identifying the plurality of information providers securely storing the personal information relating to the end user, the provider data including a protocol for instructing the processor how to access the securely stored personal information via the network, the information accessible to the processor using the protocol also being accessible by the end user via the network independently of the system for delivering personal information; and
(c) the processor storing the retrieved personal information in a personal information store for access by the selected end user.
The Board instituted a CBM review since it found that at least some of the claims were directed to a financial product or service, and that the claims were not directed to a “technological invention.” However, the Board rejected the petitioner’s assertion that the claims were directed to the abstract idea of “retrieving and storing personal information.” Instead, the Board made a distinction between the abstract idea of “retrieving and storing personal information” and the invention’s process of “retrieving and storing personal information securely stored under the control of a processor at a remote location.” Citing Enfish, the Board considered the first of these two options to be “an impermissible over-generalizing” of the claims, and the Board declined to consider the second option to be an abstract idea because the petitioner did not address that option. The Board also noted that the invention solved problems encountered in the use of Internet technologies, and that previously-attempted solutions for those problems were not acceptable. For this reason, the Board found that the petitioner did not meet its burden to establish that the claims were directed to an abstract idea.
- In Ex Parte Barous (Appeal No. 2016-003320, PTAB Aug. 1, 2016), the Board reversed a Section 101 final rejection of claims directed to a system for distributing coupons from third-party retailers. The Examiner had asserted that the claims were directed to the abstract idea of distributing coupons by a retailer for the purpose of enhancing revenue. The Board disagreed that the claims were directed to this “quite broad” abstract idea but instead found the claims to be directed to “much more limited systems and methods distributing only coupon redeemable at a third-party retailer for goods that were unpurchaseable at the issuing retailer and/or are unrelated to the goods or services offered by the issuing retailer, and then only upon the occurrence of certain conditions.” The Board found that “[t]hese limitations set forth the essence of Appellant’s invention, and they clearly narrow the claims so that they do not preempt the ‘abstract idea’ defined by the Examiner.” The Board also found the Examiner’s position on whether the claims included “significantly more” than an abstract idea to be deficient. Citing the USPTO’s 2014 Interim Guidance on Patent Subject Matter Eligibility, the Board stated that “the Examiner has failed to provide persuasive argument or evidence in support of this conclusion.”
- In Ex Parte Carvalho (Appeal No.2016-001076, PTAB July 8, 2016) the Board differentiated between claims that focus on an improvement in computing capabilities and those that focus on an abstract idea for which computers are used merely as a tool. The Board noted that the claims were directed at methods of reducing latency uncertaincy in a transceiver system, and thus improved the functioning of a computer rather than merely added general-purpose computer components to a fundamental economic practice or mathematical equation.
- In Ex parte Ismail (Appeal No. 2014-005477, PTAB July 2, 2016), the Board reversed an Examiner’s Section 101 rejection of claims directed to methods of using multi-pixel spectral images to identify microorganisms. The Examiner asserted that the claims were directed to “the abstract idea of data manipulation” and to methods of characterizing a microorganism through “empirical data analysis and acquisition steps [that] are well-understood, convention, and routine.” The Board was not persuaded by the Examiner’s statement, since the claims also required obtaining a multi-pixel spectral image of a sample, selecting a spectra from the image based on its spectral characteristics, and comparing the selected spectral data with that of reference microorganisms in a database to identify the sample microorganism. The Examiner asserted that these steps could be performed empirically, but the Board found that the Examiner failed to explain “how the methods claimed may be accomplished without specialized (i.e., non-abstract) techniques and equipment” such as a spectrometer. The Board also noted that “the Examiner has not persuasively demonstrated that the claim elements here add nothing of substance such that the claims stand to preempt any law of nature or abstract idea alone. Instead…the rejected claims include multiple steps directed to a practical application of a particular type of spectral-image analysis.”
- In Apple, Inc. v. Mirror World Technologies, LLC (Case No. CBM2016-0019, May 26, 2016), the Board denied institution of a covered business method (CBM) patent review against certain claims of a patent covering a computer system that stores documents in a chronological stream. The petitioners first argued that the patent was directed to cover the organization of financial activities and/or monetary matters. The Board agreed, even though the patent’s claims were broad and could cover both financial and non-financial activities. Thus, the Board found the patent to be a CBM patent that was eligible for CBM review. However, in the review the Board found the claim to be eligible for patenting under Section 101. Specifically, the Board noted that “[w]e are persuaded also by Patent Owner’s assertion that the claims cannot be performed entirely by the human mind or with pen or paper” because “the steps of the claims specifically call for operations that must be performed by a computer.” Citing Enfish, the Board found that the claims were not directed to an abstract idea but instead were directed to an improvement in computer technology.
- In Ex Parte Krampe (PTAB Appeal No. 2013-020784, Mar. 31, 2016), the applicants appealed the Examiner’s final rejection of a patent application relating to a method of using a personal wireless communication device to establish credit on a vending machine. The Board was “not persuaded that the Examiner considers all of the claim elements both individually and in combination to assess whether the claim amounts to significantly more than an abstract idea.” The Board noted that the Examiner mentioned one step of the claim, and then “the Examiner summarily concludes that the remaining steps” did not recite a machine or result in a transformation. However, the Board was persuaded that the claim required a particular device — a vending device — and thus satisfied the machine prong of the machine-or-transformation test.
- In NRT Technology Corp v. Everi Payments Inc. (CBM2015-00167, PTAB Jan. 22, 2016), the PTAB denied institution of a covered business method patent review for Patent 6,081,792, which covered a method of providing money or another item of value to an account holder using a modified terminal that can access a bank via both an automated teller machine (ATM) network and a point of sale (POS) network. The petitioner implied that the claims were directed to the abstract idea of providing money to an account holder, but the PTAB stated that this characterization “oversimplified the challenged claims.” Instead, the PTAB found: “The challenged claims are not directed simply to the idea of providing money to an account holder or using trial-and-error until success is achieved. Rather, the claims are directed to particular methods of providing money to an account holder using an ATM via a POS transaction after an ATM transaction has failed.” The PTAB also found that the petitioner did not consider the ordered combination of the claim’s elements to determine whether the additional elements transformed the claims into a patent-eligible invention.
- In Ex Parte Kuester (PTAB Appeal No. 2013-001127, May 6, 2015), the PTAB reversed the rejection of set of claims covering a method of teaching by arranging cards for a game on a base, in which the base includes compartments sized and shaped to receive and retain each card in place during the game. The PTAB stated that “[w]e agree … that rules for playing a game constitute an abstract idea” that is “akin to the ‘method of organizing human activity’ that was at issue in Alice” and which MPEP § 2016 defines as an example of a claim that is not patent-eligible. However, the PTAB found that the claims included “limitations [that] tie the method to a base having specific structural charactersitics” that “add a degree of particularity” to transform the claims into patent-eligible subject matter. (Nonetheless, the PTAB upheld the Examiner’s rejection that the claims were obvious.)
- In Ex Parte Hyde (PTAB Appeal No. 2012-009430, Apr. 29, 2015), the Board addressed certain “means plus function: claims and noted that “the ‘means plus function’ language requires the claims to be construed to cover the structure disclosed in the Specification and equivalents thereof. This is not a case where the ‘means’ is not supported by structure. We also interpret ‘circuitry’ in claim 71 to be limited to structure. Accordingly, the claims, as construed, are not broad enough to reach on software per se and the claimed subject matter falls within § 101 as a ‘machine’ and/or ‘manufacture.” (The Board did, however, uphold other rejections.)
- n Ex Parte Urban (PTAB Appeal No. 2012-005678, Apr. 3, 2015), the Board considered a fairly broad claim directed to “a method of advertising comprising the steps of: receiving compensation from a party; and placing an advertisement of the party on postage for the compensation received to advertise for the party.” While the Board upheld a rejection that the claims were obvious, the Board did not sustain the § 101 rejection, stating that:
the Examiner does not explain how, and we fail to see how, applying an advertisement, i.e., a physical implementation, to a postage stamp, i.e., a physical object, is an abstract idea. The independent claims are admittedly broad, and, if issued, could have a broad exclusionary effect. But the mere fact that the claims are broad does not mean that they are directed to an abstract idea.
- In Ex Parte Poisson (PTAB Appeal No. 2012-011084 , Feb. 26, 2015), the Examiner rejected claims directed to a method of simulating a game of football using a particular table and a particular set of cards. The Examiner asserted that the claims were directed to the abstract idea of a set of rules for playing cards. The Board disagreed for two reasons. First, the Board disagreed that the claims were directed to a set of rules for playing cards, but instead found that the claims were directed to a method of playing a football game using a table and cards with particular features. Second, the Board found that the Examiner did not meet his burden of establishing a prima facie case of patent-ineligibility:
That determination [that the claims are directed to an abstract idea] has not been made in this case. Instead, the Examiner merely expresses an opinion that ‘a set of rules qualifies as an abstract idea.’ Yet, absent supporting evidence in the record — of which there is none, the Examiner’s opinion is an inadequate finding of fact on which to base the Alice analysis. … The PTO bears the initial burden of establishing a prima facie case of patent-ineligible subject matter under 35 U.S.C. § 101. Because the facts and evidence do not support the finding that claim 1 is “an attempt to claim a new set of rules for playing a card game” and therefore, necessarily, is an abstract idea, a prima facie case of patent-ineligible subject matter under 35 U.S.C. § 101 has not been established in the first instance by a preponderance of the evidence.
- In PNC Bank N.A. v. Secure Axcess LLC (PTAB Case CBM2014-0010, Sept. 9, 2014), the Board considered a patent covering a system and method for authenticating a web page. The PTAB found the claims to be patent-eligible under 35 U.S.C. § 101 because the claims “require . . . a change that cannot be performed in the human mind.” The Board noted that “[c]laim 1, as a whole, relates to a computer-implemented method to transform data in a particular manner—by inserting an authenticity key to create formatted data, enabling a particular type of computer file to be located and from which an authenticity stamp is retrieved. On its face, there is nothing immediately apparent about these physical steps that would indicate the claim is directed to an abstract idea.”
- In each of Ex Parte Kisilev (PTAB Appeal No. 2012-007517, Oct. 21, 2014), Ex Parte Li (PTAB Appeal No. 2012-003212, Oct. 20, 2014), and Ex Parte Periyagaram (PTAB Appeal No. 2012-005321 Sept. 23, 2014), the Board reversed§ 101 rejections in which the Examiner asserted that claims covered “pure software” or “software per se” because the claims required certain hardware. For example, in Ex Parte Kisilev the claims required “a processing component” and “a signal processing routine executed by the processing component.”
- In U.S. Bancorp v. Solutran, Inc., (PTAB Case CBM2014-00076, Aug. 7, 2014), the Board considered eligibility of a patent covering a method of processing checks and check transactions. The Board first noted that “processing paper checks is more akin to a physical process than an abstract idea.” Although the claims recited some “fundamental economic practices,” the Board stated that claim elements such as “receiving said paper checks and scanning said checks with a digital scanner and comparing by a computer said digital images with data in the data file to find matches are not fundamental economic practices, mathematical algorithms, or basic tools of scientific and technological work.”
District Court Decisions:
- In Personalized Media Communications, LLC v. Funai Electric Co., Ltd. (E.D. Tex Feb. 22, 2017), the magistrate judge issued an order recommending denial of a motion to dismiss the plaintiff’s complaint on patent-eligibility grounds. The patents related to signal processing methods and systems, and the judge found eligibility on grounds such as being “directed to overcoming problems specific to the distribution of streaming digital television programming and other digital content over computer networks” and being “directed to a method of handling information transmissions whose variable-length data must first be decoded before the data can be used to create video images.”
- In Fitbit, Inc., v. AliphCom (N.D. Cal. Feb. 9, 2017), the court denied a motion asserting that patents 9,026,053; 9,106,307 and 9,048,923 failed to claim patent-eligible subject matter. The patents related to methods and systems for pairing wireless devices. At step one of the Alice analysis, the court found that “[t]he claims do not recite any process for connecting two devices, but a specific one.” While noting that the general concept of device pairing is an abstract idea, “[t]he question then becomes whether this particular ‘flavor’ of device pairing is an abstract idea. The court passed on this difficult question and moved to step two of the Alice analysis, where it found that claim elements such as (i) tapping as a form of validation, and (ii) the use of a server in a pairing process, provided an inventive concept.
- In Hitkansut LLC v. USA (COFC Feb. 6, 2017), the court considered a patent-eligibility challenge against a patent covering a method of manufacturing a physical structure with stress relieving properties. The court noted that “[t]he relevant inquiry is not whether the claims encompass ineligible subject matter, but whether the claims are ‘directed to‘ ineligible subject matter.” The court then explained that “[h]ere, the asserted claims of the ‘722 patent are directed to a new and more efficient method for treating metal parts to change their physical properties.”
- In Speed Track, Inc. v. Amazon.com, Inc. (N.D. Cal. Jan. 23, 2017), the court found that the invention of U.S. patent 5,544,360 was “not merely an abstract idea, but rather … an improved method for accessing files in a data storage system.” The court found steps such as creating a “category description table,” a “file information directory” and a “search filter” to be relevant to its decision.
- In Zircore v. Straumann Manufacturing Inc. (E.D. Tex. Jan. 20, 2017), the court rejected an argument that a patent directed to a method of manufacturing custom dental crown copings was directed to an abstract idea: “Defendants isolate two steps from the ‘606 patent claims … and ignore the remainder of the claims. Contrary to Defendants assertions, the ‘606 patent claims are directed to a method of manufacturing physical crown copings for prosthodontics.”
- In Spex Technologies Inc. v. Apricorn (C.D. Cal. Jan. 9, 2017), the court denied a motion to dismiss against two patents directed to methods and systems for providing secure data exchange between electronic devices. The court looked to the Federal Circuit’s Enfish decision and determined that a representative system claim covered a “combination of components” and not a method running on a general purpose computer. When reviewing a representative method claim, the court looked to the Federal Circuit’s McRO decision and determined that the steps in the claim “occur for the purpose of a technological improvement, which is to enhance security operations.” Therefore, the court found that neither claim was directed to an abstract idea.
- in IOENGINE LLC v. Interactive Media Corp. (D. Del. Jan. 4, 2017), the court denied a motion for summary judgment of invalidity against U.S. patent 8,539,047, which related to a method and system to execute and process data by tunneling access through a terminal network interface. The court found that the claims were directed t a “specific asserted improvement in computer capabilities.” Looking at the patent’s specification, the court noted that “the specification … provides that the solution claimed in the ‘047 patent allows users ‘to simply plug the device into any existing and available desktop or laptop computer, through which, the [device can] make use of a traditional user interface and input/output (I/O) peripherals, while [the device] itself, otherwise, provides storage, execution and/or processing resources.”
- In Synchronoss Technologies, Inc. v. Dropbox, Inc. (N.D. Ca. Dec. 22, 2016) the court declined to invalidate three patents covering digital data synchronization systems. The court looked to the Federal Circuit’s Enfish decision, which stated that “it is ‘relevant to ask whether the claims are directed to an improvement in computer functionality versus being directed to an abstract idea.'” The court considered the patents’ specifications, which explained that “the claims are directed to improving the manner in which computers synchronize data between devices connected to a network, by making that process faster, reducing the amount of bandwidth and storage space used, enabling synchronization across different data formats, and enabling synchronization without requiring devices to be physically connected.”
- In Verint Systems, Inc. v. Red Box Recorders Ltd. (S.D.N.Y Dec. 7. 2016) the court denied a motion to invalidate six patents as being directed to ineligible subject matter. The court found “significant complexity in the patents.” For example, it found that one of the patents “addresses a narrow issue that may arise in the context of a recorded telephone or computer communication containing information that a party wishes to protect from further dissemination” and causes “rendering it unintelligible to anyone without access to that information.” Regarding two other patents in the group, the court stated that “monitoring VOIP interactions requires more than just ‘monitoring a communication’.”
- In TNS Media Research, LLC, v. TRA Global (S.D.N.Y Nov. 29 ,2016), the court vacated its prior decision that dismissed claims involving patents 7,729,940, 8,000,993 and 8,112,301, which related to media advertising campaign analysis systems. The court started by characterizing its prior decision as “a reasoned attempt to follow what was, at the time, somewhat confused law.” The court then focused on claim 71 of the ‘940 patent and explained that “claim 71 is directed at the concrete idea that there are today numerous digital media platforms which can be mined for information about second-by-second or minute-by-minute household viewing; that data can be as granular as whether the volume is turned down during a commercial break, or whether the channel is switched away and then switched back. That viewing data can be gathered as to a substantial number of households — privacy protected — and compared to equally granular data on purchasing behavior, and then various analyses can be created that rely on this level of detail. This is no abstraction…. The key question is whether the abstract summary embodies the totality of the invention is all that the invention is—in other words, is the invention nothing more than the abstract concept? Here, the answer is plainly no.”
- In Huawei Technologies Co., Ltd. v. Samsung Electronics Co., Ltd. (N.D. Cal. Nov. 21, 2016), the court denied a motion to dismiss patent infringement claims involving U.S. patents 8,416,892 and 8,644,239, which relate to the information processing in communication system. The court noted that each patent’s background section described the technical problem that the invention aimed to solve. In the ‘892 patent, the problem was selection of a limited set of zero correlation zone lengths in order to limit signaling overload in a communication system. In the ‘239 patent, the problem was reducing signal interference between cells of a communication system. The court found the District Court of Delaware’s decision in Evolved Wireless to be “directly on point and highly persuasive” and found that “the claims are directed to a specific improvement in cellular communications, and not an abstract idea or mathematical formula. . . . While the improvement necessarily relies on math … [it] does not attempt to claim a mathematical formula. It discloses a method that uses a predefined set of numbers — itself derived from an equation, but not occurring in the natural environment — to enable a mobile device to more efficiently synchronize with a base station. This advance entails more than an abstract idea or ‘just math.'”
- In Evolved Wireless, LLC v. Apple Inc. (D. Del. Oct. 31, 2016), the court ruled that two patents relating to wireless communication technologies were eligible for patenting under § 101. Although the claims included mathematical algorithms, the court found that the patents were “directed to technological improvements resolving specific problems in a wireless communication system.” The court found it noteworthy that one of the patents “describes several problems in the prior art with transmitting preamble sequences over a random access channel,” and that the patent listed several objects of the invention explaining how the invention overcame those problems.
- The U.S. District Court for the District of Nevada issued two patent eligibility decisions on October 18, 2016. In 2-Way Computing, Inc. v GrandStream Networks, Inc., the court was “not convinced” that claim 1 of U.S. patent 5,434,797 was directed to an abstract concept. Instead, it found the claims’ requirement of converting electronic data packets into physical sound waves to be “a particular, concrete method of communication.” In CQ Technology Development LLC, v Bwin Party (USA), Inc., the court analyzed several patents relating to methods of paying players of a game for outcomes of the game. For each of the patents, the court found that the claims’ use of mobile device location to be significant. For example, when assessing U.S. patent 8,771,058, the court considered the claims’ determination of location-based payouts to be “concrete enough to take the claim outside of the scope of Alice Corp’s “abstract idea” exception to patentability under § 101.”
- In Green Mountain Glass LLC V. Saint-Gobain Containers, Inc. (D. Del. Oct. 11, 2016), the court denied a motion for judgment that two patents relating to methods of recycling glass were ineligible for patenting. The court noted that claimed steps such as “‘creating recycled glass products from said calculated composition’ are not steps that are typically considered abstract…. Instead, they recite steps grounded in physical action.” Thus, the court compared the claims to those of Diamond v. Diehr‘s holding which found a patent for a process of molding synthetic rubber to be patent-eligible.
- In Broadcom Corp. v. Sony Corp. (C.D. Cal. Oct. 5, 2016), the court parsed various claims of two patents and found some of the claims to be ineligible under Section 101, some of the claims to be directed to abstract ideas but containing elements sufficient to transform the claims into significantly more than an abstract idea. The court stated that the ineligible claims were directed to nothing more than a mathematical formula. However, the court found that the eligible claims “attempt to improve a technological issue” by “improv[ing] the functioning of compressing and decompressing video, images and signals”
- In MAZ Encryption Technologies LLC v. Blackberry Corporation, (D. Del. Sept. 29, 2016), the court denied a motion for judgment on the pleadings and found that U.S. Patent 6,185,681, which relates to a document management system for encrypting and decrypting documents, was related to “an improvement to computer functionality itself” and not directed to an abstract idea. The court noted that “encryption is a relatively sophisticated, computer-implemented method of protecting data, unlike the simple, human-executable method in Defendant’s analogy.” The court also found it significant that the patent’s specification described the invention as a “technical solution to problems in the prior art,” and the court noted that “significant” steps were added to the claims during reexamination. Finally, the court noted that “the preemption consideration [of McRO] confirms the Court’s conclusion at step 1 that claim 31 is not directed to an abstract idea.”
- In Tridia Corporation v. Sauce Labs, Inc. (N.D. Ga. Sept. 28, 2016), the court analyzed a patent relating to remote control of software applications and acknowledged that that it “struggles” with step 1 of the Alice test as applied to the patent. However, the court said that it “ultimately does not have to decide whether the 398 patent is directed to an abstract idea” because it found that the patent “is a technological advance” under Alice step 2. In particular, the court found that the patent “overcomes a flaw in existing technology – the inability to remotely install software on-demand without pre-installation.” Thus, it found that the patent “is a technological advance that improves the remote control field.”
- In Personalized Media Communications, LLC v. Apple Inc. (E.D. Tex. Sept. 13, 2016), the court denied a motion to dismiss which sought to invalidate two patents directed to signal processing techniques. The court found that one of the patents, US 8,559,635, was not directed to an abstract idea but instead was directed to “using a ‘control signal’ associated with ‘digital programming’ to ‘decrypt programming’ ‘based on’ the ‘control signal,'” and that even though elements such as digital programming, encryption and decryption existed before the patent’s priority date, it was not clear “why the conventional and generic claim elements shown above must be arranged as they are recited in claim 1.” The court reached a similar conclusion for US 8,191,091, which it found to be directed to “using an ‘instruct-to-enable signal’ in ‘digital information’ to ‘determine a fashion’ in which a station ‘locates’ a ‘decryption key’ that can then be used for ‘decrypting information'” rather than an abstract idea.
- In Zak v. Facebook, Inc. (E.D. Mich. Sept. 12, 2016), the court denied a motion for summary judgment which asserted that two patents directed to content management methods and systems were not eligible under Section 101. Applying step one of the Alice test, the court found that the patents’ representative claims were directed to the abstract idea of organizing human behavior and did not clearly improve the functioning of a computer. However, the court found that the representative claims included significantly more than just an abstract idea, since they specified how websites may be manipulated to achieve a desired result and thus “specif[y] how a solution will be implemented that addresses a business challenge particular to the Internet\, namely allowing ordinary users to maintain dynamic websites by managing the content of websites and controlling users’ interactions with web pages.”
- In Comcast Cable Communications, LLC v. Sprint Communications Company LP (E.D. Pa. Aug. 25, 2016), the court denied a motion for summary judgment of invalidity against a patent directed to methods and systems for requesting and sending information relating to a terminal of a cellular network. The court found that the claims “implement a specific improvement in cellular networking” and thus covered eligible subject matter. The court noted that “the patent does not present a clear-cut case at Alice step one because the patent does not claim a known economic or business practice implemented on a generic computer.” The court explained that in the patent “the cellular network is not ‘invoked merely as tool’ [but instead] the claims set out a method for achieving a specific goal … by applying the abstract idea of matching identifiers to the cellular network.” Thus, the court found that “[t]he patent solves a specific problem in cellular networks: ‘[h]ow can a wireless terminal be identified from outside the cellular network so that inquiries related to the wireless terminal can also be carried out reliably when the wireless terminal has a dynamic … address’.”
- In Intellectual Ventures I LLC v. J Crew Group (E.D. Texas Aug. 24, 2016), the court considered three patents and found one of the three patents (but not the other two) directed to eligible subject matter. Patent RE43,715 is directed to a method for allowing an Internet user to create a web page that integrates private data and public data. Patent 6,782,370 is directed to a method of recommending goods or services to a customer based on that customer’s input and a database of purchasing history of other customers.. Patent 5,969,324 is directed to a database management method that retrieves transaction information from a database based on data associated with a nonpredictable bar code. The court found that the 715 and ‘370 patents claimed ineligible abstract ideas without significantly more. However, when assessing the ‘324 patent, the court found that the claimed limitations of a “nonpredictable bar code” and “transaction information asssociated with a nonpredictable bar code” were “elements [that] place substantial limitations on the scope of the asserted claims.” The court found the combined use of nonpredictable bar codes with transaction information to be “[f]ar from conventional” and thus patent-eligible.
- In POWERbahn, LLC v. Foundation Fitness, LLC (D. Nev. Aug. 11, 2016), the court found that four patents relating to exercise equipment and methods of using exercise equipment. One of the patents claimed an exercise device with a base, a force-generating device, a movable member, and a controller that controlled the resistance force applied to the movable member. The claim required that the controller use a haptic equation, and the defendants argued that the haptic equation limitation rendered the claims ineligible. The court disagreed, stating that “[t]his argument either grossly misreads the claims in the patent or stretches the rule in Alice beyond recognition.” Another one of the patents claimed a method of controlling an exercise apparatus, and the court found this patent to be aimed at a “particular concrete and tangible form” of a piece of exercise equipment such as a treadmill, elliptical or stationary bike.
- In Kahr v Cole (E.D. Texas Aug. 8, 2016), the court denied a motion for summary judgment which asserted that U.S. patent 7,804,850 claimed ineligible subject matter. The court stated that the representative claim “is manifestly narrower than [the abstract idea of] ‘traffic metering’ and … does not cover delaying any transmission by any amount of time; claim 21 is limited to delaying the transmission of a ‘protocol data unit’ (a specific type of data packet) by exactly ‘an integer multiple of the current air interface transmission time interval.'” The court stated”[t]his is an archetypal example of an invention directed to ‘improving the functioning of the computer itself’ or ‘improv[ing] an existing technological process’ that Courts have repeatedly held to be patent-eligible”
- In Iron Gate Security, Inc. v. Lowe’s Companies, Inc. (S.D.N.Y. Aug. 3, 2016), the court found that U.S. Patent 7,203,693, which covers a method of indexing data in a database was not directed to ineligible subject matter. The decision contained a thorough analysis of the Federal Circuit’s post-Alice caselaw and distilled those cases into a few general principles:
- The court first explained that to resolve the question of whether a claim is directed to an abstract idea, “[a] court must … ask whether the claims are directed to a specific implementation to a solution to a problem. The point is not to deem ineligible any task or concept that can possibly be envisioned or performed by the human mind.”
- The court then provided a “list of non-exhaustive questions relevant to the
step two analysis” of Alice. These questions are: “(1) Is there an improvement recited? (2) Is there a benefit recited? (3) Is something new recited? (4) Does the patent have one or more particular applications? (5) What are the steps and limits to be followed in applying the invention?” The court explained that “[c]onsideration of these questions, among others, allow a court to discern whether a claimed invention merely seeks to apply a conventional concept to a technological setting or actually effect an improvement in some field.”
- The court also cautioned against confusing novelty with patent-eligibility: “A basic four-function calculator performs the same mathematical calculations which the human mind is capable of performing, albeit with greater speed, efficiency and accuracy…. The Court is highly skeptical that, if first invented today, such an invention would be found to be directed to an abstract idea at Alice step one based on this high-level description of the invention. It is worth reemphasizing that Alice is not a novelty test; it is improper to ask under Alice ‘has this been done before.’ That is a novelty question.”
- Ultimately, the court found that the claims at issue were not directed to an abstract idea: “Here, when one reads the actual language of those claims in conjunction with the specification, proper characterization of the claimed invention requires one to include the limitations of processing motion data from a sensor in real time, indexing data from the sensor at the same time as its capture along with pre-existing data, and generating an index by cross-indexing the real-time data against the pre-existing data…. Thus described, it is clear that the ’693 Patent is directed to particular improvements over prior art multimedia data indexing techniques that render such data accessible in real time.”
- In ChriMar Systems v. Alcatel-Lucent USA, Inc. (E.D. Tex. July 29, 2016), the court denied a motion for summary judgment of invalidity against a family of four patents relating to Ethernet terminal equipment and methods of using such equipment. The defendants argued that the asserted claims of the patents-in-suit were directed to the abstract idea of correlating information about a device based on a measurable electrical property of the device. The court disagreed. When discussing a representative claim of one of the patents, the court noted that “[s]imply because the claims require distinguishing information associated to impedance within the path does not mean the claim is abstract or could be performed entirely by a mental act.” Instead, the court explained that the claim “recites a specifically adapted piece of Ethernet data terminal equipment that is uniquely configured in a path (as claimed) across Ethernet connectors and selected contacts to present distinguishing information about the Ethernet data terminal equipment associated to impedance within the path,” and that “the claimed invention is directed to resolving an Ethernet network specific problem—to provide a means for asset identification that does not use existing network bandwidth and therefore allows identification even in the absence of power.” The court made similar findings for representative claims of the other three patents.
- In Polaris Innovations Limited v. Kingston Technology Company (C.D. Ca. Jul. 21, 2016), the court denied a motion for judgment on the pleadings against two patents that claimed circuit board structures. The court explained that “[t]hough courts in recent years have invalidated multiple computer-related patents through the application of § 101 … caselaw does not indicate that the Supreme Court and Federal Circuit have taken comparable action under § 101 to invalidate ostensibly novel computer hardware designs.” The court also noted that prior cases “concerned mathematical formulas, general economic principles, business practices, and other mental processes – either themselves or as performed on a generic computer – not the design of the hardware itself.”
- In Audio MPEG Inc. v. HP Inc. (E.D. Va. July 1, 2016), the court relied on the Federal Circuit’s Enfish decision to find that certain claims of patents 5,323,396; 5,777,992; and 5,539,829 were not ineligible under Section 101. The court noted “the invention’s ability to run on a general-purpose computer does not doom the claims. Indeed, the claims at issue here undoubtedly make computers more efficient. They solve a problem that the MPEG Audio standards-setting organization identified.” The court also noted that the claims required “specific equipment that encodes and decodes digital audio in a new way, using a specific format that is more efficient and flexible than previous methods to solve an existing problem.”
- In Sophos v RPost Holdings Inc. (D. Mass. June 3, 2016), the defendant asked the court to find three patents relating to electronic message delivery ineligible. The accused infringer argued that the claims were reduced to a system for electronically sending certified mail. The court disagreed and stated that the claims were not directed to an abstract ideal because they perform tasks “that the United States Postal Service cannot do.” The court also found that even if the claims were directed to an abstract idea, they solve a technical problem of electronic messages by using an intermediate server between a sender and receiver ro provide proof of content and delivery.
- In Yodlee v. Plaid Technologies (D. Del. May 23, 2016), the court considered a motion to dismiss on the grounds that seven patents directed to aggregation and delivery of data were directed to ineligible subject matter. The court granted the motion with respect to three of the patents, and denied the motion with respect to the other four patents. When discussing the four patents for which the court denied the motion, the court found that even if certain concepts in the claims were indeed abstract ideas, that did not mean that the claims were “directed to” the abstract ideas. Citing Internet Patents Corp. v. Active Network, Inc. and Enfish LLC v. Microsoft Corp., the court determined that it could not clearly conclude as a matter of law that the “plain focus of the claims” was an abstract idea. The court then moved to step two of the Alice analysis and found additional claim elements that could be considered to be significantly more than an ineligible concept.
- In ART+COM Innovationpool GMBH v. Google Inc. (D. Del. Apr. 28, 2016). the court considered whether claim 1 of a patent relating titled “Method and device for pictorial representation of space-related data” covered eligible subject matter. The Court concluded that the claim was directed to an abstract idea, specifically the idea of “storing image data, then repeatedly requesting specific data, which is then stored and displayed.” However, the court considered claim elements such as “dividing each of the one or more sections having image resolutions below a desired image resolution into a plurality of smaller sections, requesting higher resolution space related space-related data for each of the smaller sections” to require “a specific
way of overcoming a problem which plagued prior art systems.”
- In Avago Technologies General IP (Singapore) Pte Ltd., v. Asustek Computer, Inc., (N.D. Ca. April 25, 2016), the court concluded that patent relating to an MPEG decoder system was not directed to an abstract idea. The court concluded that “the purpose of the claims at issue is to decompress digital video using a single memory.” The court thus found that “there is not genuine risk of preempting future research and development – i.e., Avago is not simply claiming an abstract idea in the attempt to lay claim to a building block of future research and development; the invention has a specific configuration, not a broad abstract idea.”
- In Ronald A. Katz Technology Licensing L.P. v FedEx Corp. (W.D. Tenn. Mar. 24, 2016), the court considered whether claim 18 of U.S. Patent 6,292,547, titled “Telephonic Interface Statistical Analysis System,”was directed to ineligible subject matter. The court agreed with the defendant that the claim was directed to item-ordering and restricting access, and that item-ordering and restricting access were abstract ideas. However, the court also found that the claims was not directed only to the abstract ideas. The court also found that the claim’s “record testing structure” element was a “special-purpose, not generic, computer.” The court also found that “claim 18 as a whole plausibly recites an unconventional solution to a computer-telephony network problem” that, with reference to DDR Holdings, “presents a solution to a problem particular to computer-telephony.
- In SRI International Inc. v. Cisco Systems Inc. (D. Del. Apr. 11, 2016), the court considered motions for summary judgment against U.S. patents 6,711,615 and 6,484,203. The patents shared a common specification and related to the monitoring and surveillance of computer networks for intrusion detection. The court noted that the patents “address the vulnerability of computer networks … to attack” and “are, therefore, more complex than ‘merely recit[ing] the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Instead, the court found the claims to be “better understood as ‘necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”
- In Signal IP Inc. v. American Honda Motor Co. (C.D. Cal, Mar. 22, 2016), the plaintiff accused several automobile manufacturers of infringing several patents. The defendants argued that certain claims of U.S. patents 5,714,927 (relating to a method of improving a perceived zone of coverage of a vehicle radar system) and 5,954,775 (relating to a method of accommodating communication of two types of data at different data rates on a common communication link) were invalid on patent eligibility grounds. The court disagreed, and held that the claims of the ‘927 patent were not “inherently mathematical” but instead “describe concrete steps to be performed” to solve “at least two blind-stop-system-specific practical problems arising from the use of radars.” The court also held that the claims of the ‘775 patent did not fit into any of the categories of abstract ideas but instead described a particular communications protocol.
- In ContourMed, Inc. v. American Breast Care, LLC (S.D. Tex. Mar. 17, 2016), ContourMed Inc. held a patent covering a method for forming a model of a breast prosthesis. The patent required the use of a scanning device and tangible alignment markets that are used as reference points in the image. The defendant argued that the claims were directed to an abstract idea because they claimed a method of generating a computer model on a generic computer using conventional scanning equipment. The court disagreed, stating that the patent was not directed to an abstract idea: “While the process claimed in the … Patent does employ software to process images and perform 3D modeling, the underlying concept involves substantial tangible components. The patent claims imaging of the breast to the ultimate end of creating a breast prosthetic, using alignment markers placed on the breast and captured in the image to aid in the computer modeling.”
- In International Business Machines Corp. v. The Priceline Group Inc. (D.Del. Feb. 16, 2016), the defendants filed a motion to dismiss and asserted that four U.S. patents were directed to non-patent-eligible subject matter. In each case, the court found that the defendants’ arguments “oversimplified” the nature of the relevant patent:
- Patent 5,961,601 related to a method of enabling a computer to preserve state while communicating over a network via a stateless protocol by recursively embedding state information in certain communications. The court noted that the claim’s “‘recursively embedding’ concept is clearly not an ‘inherent’ step for keeping track of state,” and thus the claims were not directed to an abstract idea. The court noted that the patent itself “details several examples of prior art mechanisms to preserve state information.”
- Patent 7,631,346 was directed to a single-sign-on (SSO) protocol for a computing environment. The court noted that “the true heart of the invention is the utilization of SSO technology to automatically create an account at the service provider level on behalf of users who did not previously have such accounts, all in order to allow the user to access protected resources at the service provider.” The court also noted that the “claim 1 provides a sufficiently specific computing solution to the problem of authentication barriers that make it difficult for users to easily interact with various protected resources during a session.”
- Patents 5,796,967 and 7,072,849 each related to methods of presenting advertisements to users of an online service. The claims required that the systems generate partitioned screen displays so that ads can be presented within the partitions. The court agreed that this concept was an abstract idea, but the court found that certain additional steps of the claims, such as the division of applications and ads into discrete objects that are stored locally and on a host computer, appeared to be a concrete application of the concept of local storage. The court noted that additional factual development was needed, but denied the motion to dismiss because these limitations could be sufficient to survive part two of the Alice test.
- In Gonzalez v. Infostream Group, Inc. (E.D. Tex. Feb. 6, 2016), the court denied a motion for summary judgment of invalidity against two patents relating to the creation of digital labels for use with websites. The challenger contended that the patents claimed the abstract idea of using labels to facilitate searches. The court disagreed, stating: “‘Gathering’ data may describe an abstract idea, but ‘producing’ a ‘label’ based on that data does not describe an abstract idea.” By way of comparison, the court said that “a claim directed at using a computer to issue “revolving credit” may be directed at an abstract idea, but a claim directed at a ‘credit card’ is not an abstract idea. A ‘credit card’ works as a specific and concrete implementation of the abstract idea of revolving credit.” Based on this comparison, the court also said that “using ‘labels’ serves a concrete and specific way of conducting data storage and search.” Finally, the court explained that even if the claims were directed to an abstract idea, they “improve the computer system to address the Internet-centric problem of ‘surfers’ being unable to find information through word-match searches.”
- In Genband US LLC v Metaswitch Networks Corp. (E.D. Tex. Jan 6, 2016), the court denied a motion for summary judgment that certain claims of U.S. Patents 6,772,210 and 7,047,561 fail to claim patent-eligible subject matter.
- The ‘210 patent related to a method of exchanging messages between two telephone number-based devices across two networks. At issue was whether the preamble of a representative claim (which took up 9 lines of the published patent) limited the rest of the claim (which only took up 7 lines). The court found that the “lengthy preamble breathes ‘life, meaning, and vitality’ into the claim by explaining the structural context of the invention including how the two networks are coupled (‘through a gateway’) and what types of networks they are (‘both IP networks’).” The court found these elements of the preamble to be both limiting and sufficient to show that the claim is not directed to an abstract idea but instead addresses a problem “specifically arising in computer networks.”
- The ‘561 patent related to a method of protecting a computer network while transmitting and receiving IP packets. The defendant argued that “classifying packets based on their channel” is an abstract idea, but the court disagreed, noting that the ‘561 patent also “attempts to ‘overcome a problem specifically arising in the realm of computer networks.'”
- For each patent, the court also found that the claims included “significantly more” than any asserted abstract idea because they “improve the functioning of the computer itself.”
- In Motio, Inc. v. BSP Software LLC (E.D. Tex. Jan 4, 2016), the court denied a motion seeking to invalidate a patent covering an automatic version control in a business intelligence system. The court acknowledged that maintaining versions of electronic documents is an abstract idea. With a nod to Alice’s statement that “we must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more,” the court found that the claims of the patent at issue did claim something more. Specifically, the court noted that claim 1 of the patent required an “automated agent that interfaces with the business intelligence system to provide automated version control to the business intelligence artifact” and noted that the claims “describe an invention that serves as an addition to a business intelligence system rather than claiming a monopoly on all version control systems.”
- In 01 Communique Laboratory Inc. v. Citrix Systems Inc. (N.D. Ohio Dec. 21, 2015), the court granted the plaintiff/patent holder’s motion for summary judgment that the claims of U.S. Patent No. 6,928,479 were eligible under § 101. The claims involved a system and computer program product for providing access to a personal computer from a remote computer, where the accessed computer is defined by a dynamic public IP address or a dynamic LAN IP address. The court noted that when it considered a representative claim as a whole, the purpose of the claim was “not simply to allow people to talk with each other, but to allow direct access of data on the personal computer from the remote computer.” The court also found that the claim was “not merely directed to a broad concept of remote access or automatic call routing” but rather to a “‘particular approach’ to solving problems with prior art remote access patents.” The court also found the claims to be patent eligible under the second step of the Alice analysis since the “provide a specific solution to remote access problems that is necessarily rooted in computer technology, and thus an inventive concept.” As the court noted: “Alice did not foreclose all software based patents as ineligible under § 101 just because software runs on computers. The test is not the presence or absence of a computer, but the presence or absence of an inventive concept.”
- In Finjan Inc. v. Blue Coat Systems, Inc. (N.D. Ca. Nov. 20, 2015), the defendant challenged the eligibility of a patent relating to a method for attaching a downloadable security profile to a downloadable. For example, claim 1 read as follows: “1. A method comprising: receiving by an inspector a Downloadable; generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.” The court found that this claim was not directed to an abstract idea because the claim was comparable to a hypothetical, patent-eligible claim in the USPTO’s Abstract Idea Examples guidance. Specifically, the court found this similar to the first example in the USPTO guidance, which covered a method of “Isolating and Removing Malicious Code from Electronic Messages.” The court found that the challenged claims were not abstract because they were “directed towards performing steps leading to identifying malicious code to create a new data file containing a security profile.” The court also found that the claims were “rooted in computer technology as it covers the identification of suspicious code which do not have significance outside the realm of computer technology.”
- In Timeplay Inc. v. Audience Entertainment LLC (C.D. Ca. Nov. 10, 2015), the court denied a motion to dismiss for lack of patentable subject matter in a case involving a multi-player game system patent. The court noted that the patent claims required multiple “handheld game controllers” that are located “in proximity to [a] primary display means,” a “communication controller,” and a “game server [that] is configured to download a game software module to each handheld game controller.” The court stated that while although the claims may be directed to the idea of “multi-player gaming using a hand-held controller,” it was not aware of “any authority compelling the conclusion that such an idea … is ‘abstract’ within the meaning of Section 101.” The court also found that “the individual components of the claimed system operate together to improve the functioning of multi-player gaming systems.” The court even found the idea underlying the patent of DDR Holdings to be more easily characterized as abstract than the one underlying the patent in this case.
- In Intellectual Ventures I, LLC v. Canon Inc. (D. Del. Nov. 9, 2015), the court denied a motion for summary judgment that asserted, among other things, that a patent relating to an image scanning method. Looking to “DDR as a benchmark,” the court stated that “the claims (informed by the specification) must describe a problem and solution rooted in computer technology, and the solution must be (1) specific enough to preclude the risk of pre-emption, and (2) innovative enough to ‘override the routine and conventional’ use of the computer.” Noting that “[t]he asserted claims describe steps including determining the parameters (which meet a certain mathematical formula) and applying parameters to operate a scanner,” the court concluded “that such claims do not claim the mathematical formula nor do they seek to simply ‘implement’ such a formula, therefore, the claims are not directed to an abstract idea.” The court also looked at the language of the claim and stated that steps that use parameters to “drive a motor”, “output an image signal” and “store the image signal” were “of sufficient specificity and describe a specific method for a scanner, thereby disclosing an ‘inventive concept.'”
- In Versata Software Inc. v. Zoho Corporation (W.D. Tex. Oct. 26, 2015), the court denied a motion for summary judgment of invalidity against a patent covering a method of presenting high density information on a space-constrained display of a portable device. The challenger argued that the patent was directed to the abstract idea of “using symbols on a display to represent external information and updating these symbols as that information changes.” In a cursory fashion, the court dismissed this argument and stated that ‘[i]ndulging every inference in [the challenger’s] favor” it still found that the patent “does not embody an impermissibly abstract idea. The court also noted that a “goal of the ‘740 Patent’s innovation is to allow a relatively large amount of data about particular external states to be easily monitored on mobile devices and for the information to be digested by the user at a glance. Excessive clicking and linking is reduced or eliminated, and critical information is clearly displayed on the space-constrained mobile device. These useful compact displays are coupled with the flexibility of allowing a non-programmer user to configure what external states to monitor and how to monitor them. This combination creates a useful system for monitoring data from a mobile device.”
- In ContentGuard Holdings, Inc. v. Amazon.com, Inc. (E.D. Tex. Oct. 5, 2015), the court denied a motion for a judgment of invalidity on the pleadings involving six patents that the court characterized as “directed toward systems and methods for controlling the use and distribution of digital works in accordance with ‘usage rights’ using specific and non-generic ‘trusted’ systems.” The court found that “the Patents-in-Suit are not directed toward an abstract idea, at least because they are directed toward patent eligible methods and systems of managing digital rights using specific and non-generic ‘trusted’ devices and systems.” The court also stated that even if the claims did cover an abstract idea, “the Patents-in-Suit disclose particular solutions for the problem of ‘enforcing usage rights and restrictions on digital content’ that ‘(1) [do] not foreclose other ways of solving the problem, and (2) recite a specific series of steps that result in a departure from the routine and conventional’ way of managing digital rights.” (Quoting the Federal Circuit decision in Internet Patents Corp. v. Active Network, Inc.) Facing a renewed motion, the court affirmed an expanded upon its previous holding in the case in which it reserved the right to supplement its analysis.
- In Veracode, Inc. v. Appthority, Inc. (D. Mass. Sept. 30, 2015), the court denied a post-trial motion which asserted that a patent relating to a software decompiler was invalid. The court acknowledged that “[t]he basic concept of translating binary code into an equivalent, legible code is, in essence, an idea of mathematics implemented by a mental process.” However, the court also found that the claims included an inventive concept: “the claimed method’s focus on the generation of an optimized, exhaustive model … renders the claimed invention more complex than what could be done by humans and transforms the claimed invention from an abstract idea simply automated by a computer into an inventive concept.” After looking at evidence produced during claim construction of what humans did to analyze code since the 1990’s and found that the invention “overcame numerous shortcomings of existing methods for identifying security risks in producing a more complete and accurate model of the underlying software.” The court also noted that “[i]f the invention merely improved the speed and accuracy of a particular task through computer implementation, that would not be enough to generate a patent-eligible concept. But the claimed method exceeds mere automation of a well-known process by harnessing and improving upon the unique properties and complex capacities of computer technology.”
- In SimpleAir v. Google, Inc. (N.D. Tex. Sept. 25, 2015), the court denied a motion for summary judgment of invalidity against certain patent claims relating to systems and methods for transmitting data to remote computing devices. Each of the claims required a “transmission gateway” and a “central broadcast server.” The court found that the patents “at some level, contain an implementation of the abstract idea ‘packaging and transmitting information'” but are not “directed toward an abstract idea, because they are directed toward patent-eligible methods and systems of ‘using a central broadcast server’ to package and transmit ‘data from an online information source to remote computing devices.'” The court also stated that the patents “disclose particular solutions for the problem of ‘[l]ack of notification of information delivery when offline'”
- In Mobile Telecommunications Technologies, LLC v. Leap Wireless International, Inc. (E.D. Tex. Sept. 24, 2015) the court denied a motion for judgment that a patent covering a multi-carrier transmission technology was not patent-eligible. The challenger argued that the patent “covers the abstract idea of selecting the transmission frequencies for multi-carrier transmission via a mathematical formula.” However, the court noted that “[t]he fact that some requirements of a claim can be rewritten in the language of mathematics does not inherently mean that the claim is directed to an abstract idea.” Since the patent was not “an attempt at patenting the mathematical formula” and the challenger “cited no authority that holds when an otherwise patent-eligible claim is expressed as a mathematical formula, the claim becomes patent-ineligible under § 101,” the court found that the claims were not directed to an abstract idea. Quoting Alice, the court also found that the claims “might ’employ a … mathematical equation, but it use[s] that equation in a process designed to solve a technological problem in ‘conventional industry practice.'”
- In Prism Technologies, LLC v T-Mobile USA, Inc. (NED Sept. 22, 2015), the Court upheld the validity of two patents related to methods of controlling access to computer resources via an Internet protocol network. Although the court found that the claims were directed to the abstract idea of providing restricted access to resources, the court found that the claims also “include inventive concepts” that “modify the way the Internet functions to provide secure access over a protected computer resource.”
- In Canrig Drilling Technology Ltd. v Trinidad Drilling L.P. (S.D. Tex Sept. 17, 2015), the court upheld two patents relating to horizontal drilling methods. The patents covered methods and systems for oil and gas drilling such as the following claim: A drilling method comprising: monitoring the rotation of a drill string with a sensor at the surface; transmitting said rotational information to a computer; controlling a motor that rotates said drill string with said computer; and rotating said drill string to a predetermined angle.” The court explained that “[t]he subject matter of Canrig’s claims is much more narrow and covers processes, not abstract ideas. The claims in Canrig’s patents address specific challenges in directional drilling through a concrete process for controlling the rotation of the long drill strings to and between predetermined angles…. Such tangible, physical processes have long been considered eligible for patent protection.”
- In DataTern, Inc. v MicroStrategy, Inc. (D. Mass. Sept. 4, 2015), the court denied a motion for summary judgment of invalidity against U.S. Patent 6,101,502, which claims “a method for interfacing an object oriented software application with a relational database.” To assess whether the claims covered an abstract idea, the court applied a standard the Central District of California which stated that “the court must identify the purpose of the claim – in other words, determine what the claimed invention is trying to achieve – and ask whether the purpose is abstract.” The court noted that “when read as a whole, the patent here does not recite a computer as a post-solution limitation or a specific application of a more generic abstract idea. … Rather, the ‘502 patent is directed at solving a problem that specifically arises in the realm of computing: object-oriented programs exist only in the world of computers, and relational databases are utilized primarily, if not exclusively, on computers.” Because of that, the Court found that the claims are “necessarily rooted in computer technology” like those of the Federal Circuit’s DDR Holdings case.
- In KlausTech Inc. v. AdMob Inc., (N.D. Cal. Aug. 31, 2015), the court denied a motion for judgment of invalidity on the pleadings against U.S. patent 6,128,651. The patent, which had recently survived reexamination after the patent holder made several claim amendments, relates to a method and system that causes a browser to provide advertising content in a non-scrolling ad frame for a particular time interval. For example, claim 20 of the ‘651 patent related to a system that implements a centrally controlled ad display method which includes “placing the ad content in the non-scrolling ad frame of the browser to display the ad content and start the individual timer; timing out the individual timer of the ad content at the non-scrolling frame at the browser; reporting from the browser to the central controller the timer timeout of the ad content; retaining in the central controller a record of the browser identity, the ad identity, and the timer timeout of the ad content at the browser; and transmitting to the reporting browser a request for new ad content.” The court found that the claims did not cover a mere abstract idea but instead related to a “technological improvement specific to Internet-related advertising” The court stated: “The ‘651 patent employs a new approach to control and monitor the display of advertisement on Internet browsers and seeks to solve technical problems that do not exist in the conventional advertising realm.”
- In Paone v. Broadcom Corporation (E.D. NY Aug. 19, 2015), the defendant asserted that a patent relating to a method of encrypting data claimed ineligible subject matter. The court found the case of TQP Dev LLC v Intuit, Inc. to be instructive. Although the TQP case predated Alice, the court noted that Judge Bryson of the Federal Circuit wrote the opinion and focused on the claimed “inventive concept” that became part of the Alice test. Based on the TQP decision and subsequent Federal Circuit cases, this court concluded that “a patent on a method of data encryption is not per se invalid, as long as it is specific enough.” Here, the claims required: creation of an object key in a block cipher; creating a key schedule based upon the object key; encrypting a random session object key in a block cipher encryption process with the object key;
encrypting a block of input plaintext data using the key schedule;
modifying the object key based on seeding from the random session object key; modifying the key schedule based upon the modified object key; encrypting a next block of input plaintext data using the modified key schedule; and repeating the modifying and encrypting steps until the encryption is completed. The judge reviewed this claim and stated that if the limitations of the claims in the TQP case were “sufficient to confer patentability, I do not see how the claim limitations contained in [this] patent could be said to add less.”
- In The Chamberlain Group LLC v. Linear LLC (N.D. Il. July 7, 2015), the defendant asserted that five patents relating to movable barrier (e.g., garage door, gate, etc.) monitoring and alarm systems lacked patent-eligible subject and matter. After noting that the Supreme Court stated in Mayo v. Prometheus that “too broad an interpretation of this exclusionary principle could eviscerate patent law,” the court first analyzed the claims of the monitoring system patent and found that “they have physical and tangible components that are directed to more than performance of an abstract idea.” These components included a computer network interface for communication between the movable barrier and a controller, a barrier operator, and a barrier operator. The court also noted that “opening and closing—moving—a movable barrier in response to signals as to that barrier’s status is not an abstract idea. Monitoring the status of an open or closed movable barrier when the inquiring party is not in visual proximity of the movable barrier is not an abstract idea. An idea is abstract if it has ‘no particular concrete or tangible form.’” (Quoting the Federal Circuit decision in Ultramerical v. Hulu.) The court also stated that “[t]he detection of the movable barrier’s status and relaying of that status over the communication network to the various integrated 18 physical components renders the claimed invention more than an abstract idea because it provides a ‘concrete and tangible form.'” The court further noted that the “claims are not directed to a method for organizing human activity or computerizing a long-standing commercial practice. rather, the claims are directed to a garage door opener and a network—the use of a computer in conjunction with a machine in a system. … The ‘977 Patent’s invention improves the technology or technical field by integration of a garage door opener and a network. Absent the integration, the garage door opener was limited. With the integration, the garage door opener can do new things like provide for remote monitoring and control of the garage door opener. The integration of the computer with the garage door opener, therefore, improves the technical field of a generic garage door and garage door opener.” The court also cautioned against confusing novelty with a Section 101 analysis: “While it may be true that ancient civilizations used—and even, opened and closed—movable barriers, that analysis is more appropriately addressed as a question of what constitutes the prior art and whether the ‘977 Patent claims hold any novelty over the teachings of the prior art.” The court then analyzed the claims of the alarm system patents and reached a similar conclusion: “The claims are directed to movable barrier operators and security systems that, individually, are the sort of mechanical and electrical systems that are patent-eligible.”
- In Freeny v. Murphy Oil Corp. (E.D. Tex. May 22, 2015), the defendant asserted that certain claims of a patent directed to an automated product pricing system covered “nothing more than the abstract idea of changing prices from a central location using known electronic components.” However, the court rejected that notion, stating: “Claim 24 is directed to physical systems … utilizing specific types of electronic devices that are networked together to operate in a very specific manner. This system of interconnected physical devices–implemented in a specialized manner to control the display and management of product prices–stands in stark contrast to the recitation of a general computer performing generic computer functions.”
- In Intellectual Ventures I LLC v Capital One Financial Corp. (D. Md. May 12, 2015), the Court adopted Special Master’s recommendation to grant a patent holder’s motion for summary judgment of eligibility, and deny the defendants’ motion for summary judgment of invalidity, on two patents relating to methods in which a computer parses and displays a dynamic document. The Special Master found one of the patents to cover a “highly specialized” idea rather than an abstract one, and that it “solves a unique problem in computer field allowing the business user dynamic access to various types of business documents formatted in various types of specialized, computer language syntax.” The Special Master found the other patent to require a “dynamic mobile interface that provides an ability to access files from anywhere from any device no matter where those e-files are located.” The Special Master’s recommendation also noted that “software-based patents in particular, such as this one, require a more close, and focused lens, or else the cautionary tale set forth by the Supreme Court in Alice, where the ‘abstract idea” exception swallows the broad statutory language of Section 101, may in fact come to fruition”
- In Kenexa BrassRing, Inc v HireAbility.com LLC (D. Mass. Apr. 28, 2015), the court assessed motion for judgment on the pleadings against three patents that covered methods and systems for extracting unstructured data from documents and arranging it into a structured database. The technology was designed to help employers extract and organize data from job applicants’ resumes. Using one of the patents as an example, the court said that a determination of whether the patent was directed to an abstract idea required additional factual development that could not be resolved at the pleading stage. Quoting Ultramercial, Inc. v. Hulu LLC, the court stated that “dismissal is appropriate solely when the only plausible reading of the patent is that there is clear and convincing evidence of ineligibility.”
- In Intellectual Ventures I LLC v. Symantec Corporation (D. Del. Apr. 22, 2015) the defendant filed a motion for summary judgment (“MSJ”) against three patents, asserting that the patents were directed to patent-ineligible subject matter. The court granted the motion with respect to two of the patents, but denied the motion for the third patent. The court addressed each patent as follows:
- the court found a first patent (directed to methods of characterizing a data file) to be patent-ineligible after the defendants argued, and the inventors admitted in deposition testimony, that the method could be performed by humans;
- the court found a second patent (covering methods of delivering email messages) to be patent-ineligible based on a determination that the concepts could be implemented in a brick and mortar post office; and
- the court found the third patent (covering valid screening methods) to be valid because the each claim of the patent “specifically recites a computer virus, which has computer-centric implications that cannot be abstracted away so broadly. Furthermore, the human mind cannot perform the steps described in the specification for implementing virus screening functionality in a telephone network.”
- In Messaging Gateway Solutions v. Amdocs (D. Del. Apr. 15, 2015), the court assessed eligibility of a patent covering a method of communicating between a mobile device and an Internet server by placing a text message into an Internet Protocol message. The court found that the claims were directed to the abstract idea of translation, but that patent’s representative claim also “contains meaningful limitations that prevent it from preempting the abstract idea of receiving, translating and delivering a message.” The court compared the claims to those in DDR Holdings, and noted that the representative claim is “limited to SMS text messages between a mobile device and the Internet.” The court also noted that “[c]onventionally, phones could not send SMS text messages to computers. The claimed method manipulates that interaction by translating the message in a way that allows the computer to receive and understand the message.”
- In Modern Telecom Systems LLC v. Juno Online Services, Inc. (CACD March 17, 2015), the court considered an MSJ of invalidity against a set of patents covering four different technologies: (1) a set of “Learning Sequence Patents,” that covered methods of communicating certain descriptors, signals, and data between devices over a data communication channel; (2) a set of “Power Level Calculation Patents” that used specific formulas to calculate modem power levels in signals transmitted over a data communication channel; (3) a “Fast Start-Up Patent” that claimed a method of reducing startup latency between two devices configured to communicate with each other over a data communication channel; and (4) a “Spectrum Frequency Patent” that claimed a method for error correction in data communication channel impairment. The court skipped asking whether the claims were directed to an abstract idea (part one of the Alice analysis) because in each case it considered the patents to cover more than just an abstract idea The court considered DDR Holdings and its own precedent in The California Institute of Technology v. Hughes Communications to be relevant, as it stated: “here there is no record of the technology described in the patents being well-known at the time of filing or simply involving performance of ‘well-understood, routine, and conventional activities commonly used in the industry.'” The court also rejected any notion that software is categorically patent ineligible and instead said that “software must be eligible under § 101.”
- In Ameritox, Ltd. v Millennium Health, LLC (D. Wis Feb. 29, 2015), the court considered two patents directed to methods of quantifying a metabolite in a biological sample. Although not involving software, the court considered the claims akin to a business method and applied the framework of Alice. Although the court found the claims to be directed to an abstract idea, it also noted “an invention is not rendered ineligible simply because of involves an abstract idea.” Here, the court noted that “when the invention is examined as an ordered combination, the combination of steps produces a new and useful result.” The court also noted that “the subject patents are directed to abstract ideas that improve pre-existing technology … like the rubber curing improvements in the Diehr patent.” “Indeed, each additional step taught directs the skilled addressee to an invention that allows the quantifiable analysis of urine samples to determine a patient’s compliance with a prescribed drug regimen. Thus type of improvement in existing technology is the type of invention that the statute seeks to encourage, not dismiss.”
- In Intellectual Ventures I, LLC v Motorola Mobility, LLC (D. Del. Feb. 24, 2015), the court granted in part and denied in part an MSJ of invalidity on two patents. While the court found both patents to be directed to abstract ideas, it only found one patent (covering software updating methods) to be ineligible It found the other patent to be eligible under Section 101. The eligible claims covered methods of allocating said wireless bandwidth and system resources based on contents of the packets to be communicated.
- In TQP Development, LLC v. Intuit, Inc. (E.D. Texas Feb. 9, 2015), the court denied a defendant’s MSJ of invalidity against a patent covering a method of transmitting data in encrypted form. The court noted that the claims are “specific to a particular technological field – that of data encryption” and “contain several important limitations on the scope of the basic invention” so that “the preemptive effect of the claim is very much diminished.” “Because the claim is drawn to a very specific method of changing encryption keys, it contains an ‘inventive concept’ and is a far cry from something that could fairly be characterized as a ‘basic tool[ ] of scientific and technological work.'” [Citations omitted]
- In Wavetronix LLC v. Iteris Inc. (W.D. Texas Jan. 22, 2015), the court rejected the defendant’s argument that it raised a substantial question as to invalidity of a patent covering a method of monitoring traffic flow. Noting that Alice indicates that “[m]erely employing a mathematical formula does not render a claimed method unpatentable where the method improves upon an existing process,” the court stated that the patent-in-suit covers “a process which by making use of a mathematical formula enables accurate real-time tracking of vehicles as they approach an intersection.”
- In Google, Inc. v. Simpleair, Inc. (PTAB Jan. 22, 2015), the PTAB considered a petition for covered business method patent review of a patent directed to a method of transmitting data to remote devices. The PTAB focused on the sufficiency of the petition, noting that the petition described the abstract idea using a phrase that was not recited in the challenged claims, and that the petition “does not account for each step of the claimed method.”
- In Smartflash LLC v. Apple Inc. (E.D. Texas Jan. 21, 2015), the court denied a motion for summary judgment of invalidity of patents covering data storage and access systems for paying for and downloading digital content. The court explained that “the patents here do not simply apply a known business practice from the pre-Internet world to computers or the Internet. . . . Piracy of digital content became widespread through means unknown to the pre-Internet world. The patents claim methods and systems designed to prevent such easy and unauthorized reproduction and access while allowing the access to be nearly instantaneous and the storage to be permanent.” Therefore, the court explained that “the claims solve problems faced by digital content providers in the Internet Era and ‘improve the functioning of the computer itself’ by providing protection for proprietary digital content.”
- In Fairfield Industries, Inc. v. Wireless Seismic, Inc. (S.D. Tex. Dec. 23, 2014), the court considered a patent covering a method of acquiring seismic data. The accused infringer asserted that the claims were directed to the abstract idea of relaying messages using intermediaries. The court skipped over the question of whether this was in fact an abstract idea. Instead, the court found that the claims “outline a specific method of data transmission that is a new and useful application of a generic relay system…. The practical application in the claim, including the use of acquisition units to receive and transmit data from other acquisition unites, demonstrates that this claim amounts to more than a patent on the abstract concept of a relay.” The court also found that the claims’ “close connection to a specific machine, the seismic acquisition unit, further supports a finding of patent-eligibility.”
- In The California Institute of Technology v. Hughes Communications (C.D. Ca. Nov. 3, 2014), the court denied a motion for summary judgment of invalidity of certain patents covering error correction technology. The court explained that “[w]hen claims provide a specific computing solution for a computing problem, the claims should be patentable, even if their novel elements are mathematical algorithms.” Although the court noted that the claims could generally cover an abstract idea of encoding and decoding data for error correction, the additional limitations represented “sufficiently inventive concepts” that were “narrowly defined” and did not preempt the field of error correction.
- In Card Verification Solutions, LLC v. Citigroup Inc. (N.D. Il. Sept. 29, 2014), the court denied a motion to dismiss which argued that a patent covering a method of verifying an electronic transaction was invalid under 35 U.S.C. § 101. Notably, unlike many other court decisions which discussed only the independent claims of the patent, this decision also focused on the patent’s dependent claims, which required the generation of pseudorandom tags and the attachment of those tags to confidential data. Although the court found the claims to be directed to an abstract idea, it also found the additional limitations to be significant enough to “includ[e] pseudorandom generating tag software that could not be done with pen and paper.” While noting that “[t]ypically, transforming data from one form to another does not qualify as the kind of transformation regarded as an important indicator of patent eligibility,” the court also said that “here, the claimed invention goes beyond manipulating, reorganizing or collecting data by actually adding a new subset of numbers or characters to the data, thus fundamentally altering the original confidential information.
- In AutoForm Engineering GmbH v. Engineering Technology Associates, (E.D. Mich. Sept. 5, 2014), the court addressed eligibility of a patent covering software for designing sheet metal forming tools. The court stated that the claims contained “numerous limitations that narrow the scope of the patent,” and thus make it cover more than just an abstract idea. These limitations included steps that required “arranging sectional profiles along the smooth component edge” and “laterally interconnecting the sectional profiles by a continuous surface to form the geometry of the addendum zone of the tool.
- In Helios Software LLC v. Spectorsoft Corp.. (D. Del. Sept. 25, 2014), the court considered patent-eligibility of patents covering methods of remotely monitoring data associated with an internet session and methods of controlling computer network access. The court stated that the defendant provided “no support for the position” that these principles were “fundamental to the use of the Internet or computers generally.” The court also stated that even if the claims did cover an abstract idea, the use of a computer inserted “meaningful limitations” of “real-time data capture and transmission and reception,” and that “none of these limitations could be performed by humans alone.”
International Trade Commission Decisions:
- In In re Certain Network Devices, Related Software and Components Thereof (No. 337-TA-944, ITC Mar.2, 2016) the ITC found that two patents relating to network communications components were not directed to ineligible subject matter. U.S. Patent 6,741,592 covered a switch for implementing a virtual local area network (VLAN), while U.S. Patent 7,200,145 included claims covering a router, as well as programming instructions for establishing two VLANs that receive packets from certain ports of the router. The ITC stated: “Far from being the types of claims that present issues under Section 101, the Private VLAN Patents do not claim an algorithm or computerize an approach that was implemented manually in the prior art, but rather claim a new, specific and useful device to solve a problem that existed in the networking field in the prior art.” The ITC also noted that “[a]ll of the asserted claims … require special purpose devices, and not routine or conventional structures, such as switches and routers with specific defined structures that implement the new types of ports and new types of VLANs, and which transform the networking device into a special purpose machine that can enforce the private VLAN mechanism.”
A few courts have also denied motions for summary judgment or judgment on the pleadings as premature. These decisions did not specifically address whether or not the claims were eligible under Section 101. Instead, these cases expressed a reluctance to consider the motions before claim construction, or otherwise before the record was fully developed. These cases include:
- Cioffi et al v. Google Inc. (E.D. Tex. Jan.9, 2017)
- Finjan, Inc. v. Blue Coat Systems, Inc. (CAND Dec. 13, 2016)
- F5 Networks, Inc. v. Radware, Inc. (W.D. Wash. Nov. 14, 2016)
- Phoenix Licensing, LLC v. Advance America, Cash Advance Centers, Inc. (E.D. Tex. Sept. 30, 2016)
- KHN Solutions Inc. v. Vertisense Inc. (N.D. Cal. Sept. 30, 2016)
- Diamond Grading Technologies LLC v. American Gem Society (E.D. Tex. Sept.12, 2016)
- Mantissa Corporation v. Ondot Systems, Inc. (S.D. Tex. Aug. 12, 2016)
- Palomar Technologies, Inc. v. MRSI Systems, LLC (S.D. Ca. Mar. 11, 2016)
- Advanced Marketing Systems LLC v. CVS Pharmacy (E.D. Tex. Nov. 18, 2015)
- MyHealth, Inc. v. Lifescan, Inc., (E.D. Tex. Mar. 19, 2015)
- Stoneeagle Services, Inc. v. Pay-Plus Solutions, Inc. (M.D. Fla. – two decisions, one on Feb. 9, 2015 and one on Feb 2, 2015) and
- Data Distribution Technologies LLC v. Brer Affiliates Inc. (D.N.J. Aug. 19, 2014)
- On March 22, 2016, Judge Robinson of the District Court of Delaware denied motions to dismiss in four patent infringement suits in which the defendants challenged the patent-eligibility of software-related inventions. In Intellectual Ventures I LLC v. Ricoh Americas Corporation et al. (1-13-cv-00474), the patent involved an image scanning technology. In Network Congestion Solutions LLC v. United States Cellular Corp. (1-14-cv-00903), the patent involved a system for reducing network congestion. In Treehouse Avatar LLC v. Valve Corporation (D. Del. Mar. 22, 2016), the patent involved a method of presenting data over an information network based on choices made by the users of the network. In Improved Search LLC v. AOL Inc. (1-15-cv-00262), the patents involved multilingual internet search and advertising methods. In all four decisions, Judge Robinson expressed reluctance to address the issue in a motion to dismiss, before the case could be developed through discovery. In each decision, she stated: “Given the evolving state of the law, the § 101 analysis should be, and is, a difficult exercise.” Judge Robinson noted that the court should look to DDR Holdings as a benchmark, and that the question of whether a computer-related invention was “innovative enough to override the ‘routine and conventional’ use of the computer” is a question that “may well involve issues of fact relating to the state of the art in the technological environment involved [and that] is more appropriately addressed after discovery in the context of a motion for summary judgment.”
- On June 4, 2016, Judge Robinson again used this language to deny a motion to dismiss in Treehouse Avatar LLC v. Valve Corp. (No. 15-427-SLR)
[Hat tip to Dannon Albee for providing a comment that prompted the idea for this post.]
[NOTE: originally published in November 2014, I have periodically updated this post over the past year to include recent developments.]