At the outset, the Court collected cases showing that “tailoring of content based on information about the user—such as where the user lives or what time of day the user views the content—is an abstract idea.” The claims further lacked an inventive concept because “containers,” “registers,” and “gateways” viewed individually and as an orderly whole were merely routine and conventional tools.Read More
Polsinelli on Patentability | Keeping You Informed on Alice Updates
Polsinelli’s Patent Litigation team includes 22 experienced patent litigators in our offices across the country, representing global, national, and regional companies, and individuals in patent matters. We partner with our clients to develop creative and cost-effective solutions for the complex issues that arise in patent litigation. The practice was recently named one of four 2016 "IP Powerhouses" in the nation by BTI Litigation Outlook.
In 2016, the practice continues to closely monitor ongoing judicial interpretations related to Alice Corp. vs. CLS Bank Int'l, one of the most important patent litigation matters in history.
The Court held that the ‘839 Patent is related to an unpatentable abstract idea. The Court explained that beginning at Alice step one, determining whether an object is in the right place at the right time, as claimed in the '839 Patent, fell squarely into a well-recognized category of claims directed to abstract ideas.
At the second stage of the Alice framework, the Court found that the '839 Patent did not add the requisite inventive material to transform the Patent into more than an abstract idea. The Patent holder CalAmp argued that the '839 Patent contained an inventive concept because a subset of database records is stored on the tracking device while the complete database is stored on the server, and that this specific arrangement of database records provided technological improvements over the prior art systems. The Court rejected this argument and explained that long before the filing of the Patent, computer systems had been configured in such a way to allow remote terminals to access information stored on a centralized database. Thus, applying this database structure to a tracking system was far from unconventional and insufficient to establish an inventive concept.Read More
The Court concluded that the Patents claim patentable subject matter under 35 U.S.C. § 101.
Under the first step of the Alice framework, the Court declined to decide whether the claims' particular variant of portable device pairing was an abstract idea, and assessed whether, even if it was, the concrete improvements they recited are inventive concepts under step two. The Court declined because, although the overall concept of device pairing is abstract, the claims here could be characterized as purporting to improve the functioning of the computer itself, or improving an existing technological process.
The Court then determined that under step two of the Alice framework, both the use of tapping and the use of a server, when considered along with the rest of the claims as an ordered combination, supply an inventive concept that transformed the asserted claims into patent eligible subject matter. The addition of tapping as the form of validation is an inventive concept. One problem that confronted the process of pairing small, portable devices was that they were purposefully designed to eliminate keyboards and multiple buttons in order to satisfy other design criteria. Tapping overcame this problem in an inventive way because it took advantage of the inherent, technical capabilities of the portable monitoring device—its ability to detect motion with a motion sensor—to provide a manner of validating the device that was different from traditional forms of input (i.e., buttons and keyboards).
The Court next explained that the use of a server as a part of the claimed pairing process supplied an inventive concept. As the name suggests, the concept of pairing traditionally involves two devices: the device that gets paired and the device it is paired with. By injecting a third device—a server—into this process, the asserted claims shift this paradigm so that all of the information needed for pairing does not have to be provided through the two devices. Instead, the server can also regulate and facilitate this process.Read More
Defendants erred in requesting the court consider whether the patents were an advancement over the prior art, improperly importing a 102/103 analysis. The court focused its analysis on the problem the claims set out to solve. That problem is patent-eligible: lack of precision in agrochemical spraying caused by the inability to control sprayer nozzles individually. Although this is completed in part by a mathematical formula, the focus of the claims was control of the nozzle, not the formula itself. Although the court noted that this alone resolved the issue, the court went on to analyze the inventive step. Construing the complaint in plaintiffs’ favor, the court credited plaintiffs’ position that the individual valve controls were not in the prior art. And the court said that given the parties’ disagreement on how to construe the claims, this dispute precluded early dismissal.Read More
The key claim of a first patent was not directed to an abstract idea, but instead tied to a specific structure that produced a technological improvement. The claim is directed to a “physical structure that contains a combination of components, not a method or system that uses a general computer to secure access to secret information.” Similar, the claim of a second patent has steps that “occur for the purpose of creating a technological improvement, which is to enhance security operations, so this claim is not an abstract idea.”Read More
The court found that the claims were directed to the abstract idea of “merely recit[ing] the familiar concepts of gathering data, analyzing that data for certain characteristics, and storing the results of that analysis. These are fundamental concepts germane to any type of content analysis.” But, in step two of the Alice inquiry, the court determined that when taken as an ordered combination, the claims included both spatial and temporal alterations to virus protection at the time of the invention. At that time, virus protection was localized and reactive. The invention moved malware profiling from end-user computers to an intermediate location on network, and also shifted the profile logic from one that must be applied to single, complete files to extracted aspects or components of a file after it has been decomposed. The court’s determination was based in large part on the specification of a parent patent that had been incorporated into the patent-in-suit by reference.Read More
The court determined that the ’511 patent’s claim at issue (claim 16) is directed to the abstract idea of keeping track of players’ accounts and making adjustments thereto based on the results of games between the players. These functions can be done in the mind of “a sufficiently intelligent person” and the claim simply instructs the practitioner to perform the method using generic computing devices. Similarly, the court found that claim 39 of the ’166 patent is “a textbook example of a computer utilized for its generic computing abilities to perform abstract calculations that could be performed in the mind of a sufficiently intelligent person.”Read More
In analyzing representative claim 1, the court determined that at their core, the steps described instructions for using a generic computer to collect, organize, compare, and present data for reconciliation prior to archiving. It rejected the plaintiff’s argument that the Federal Circuit’s holding in Enfish stood for the proposition that “any improvement to computer functionality itself bypasses the Alice step 1 abstract idea ineligibility exception.” The Court next determined that the need to minimize redundancy in archival systems and to increase efficiency is a challenge that arises in any archival systems regardless of whether a computer is involved. In addition, the steps all involve conventional use of a computer with conventional computer functions—which does not correspond to an inventive concept.
The court also analyzed the disagreement among courts regarding whether a clear-and-convincing standard applies when a claim is challenged under § 101. It discussed the jurisprudence on the matter and determined that having “considered the positions on both sides of this issue, it is persuaded that the clear-and-convincing standard has no role to play in the § 101 determination.” In doing so, it stated that its decision was consistent with SCOTUS’s i4i decision, the fact that § 101 determinations do not involve resolution of factual disputes, and the fact that the Supreme Court has made no mention of the clear-and-convincing standard in any of its patent-eligibility decisions since i4i.Read More
Following retirement of Judge Scheindlin, Judge Forrest invited briefing to reconsider Judge Scheindlin’s summary judgment opinion, citing the subsequent development of case law on Alice. Judge Scheindlin had found claim 71 of the ‘940 patent to be representative of the asserted claims of all three patents. That claim was found to be directed to the abstract idea of “digital, double-blind matching of collected purchase data and program delivery data to individual households,” which was confirmed by the finding that the process could be performed by humans instead of computers. That court also only found conventional techniques and post-solution activities in the limitations that did not add an inventive concept. In vacating Judge Scheindlin’s opinion, Judge Forrest considered the problem the claims purported to solve: determining the value proposition of an advertising campaign in today’s fragmented digital environment. Judge Forrest found the claim is instead directed to the “concrete” idea that moment-by-moment analysis of household media consumption can be compared to purchasing behavior, and concluded that the claims provided a solution to this problem through “limited, concrete steps.” Such steps are inventive as they include, for instance, notation that a subject has turned down the volume of a device as feedback on the quality of an ad.Read More
The court found the claims embodied an abstract idea because they only relied on a general purpose computer, and did not for instance specify how to collect and transmit information. Citing Enfish, the court found the claims were directed to the abstract idea of collecting, analyzing, and presenting information, and not a “specific asserted improvement in computer capabilities.” Turning to the inventive concept, the court found routine and conventional activities implemented in general purpose computers.Read More
As to the claims the PTAB had invalidated, the court found no fault in the PTAB’s change in description of the abstract idea from generating a menu at institution to generating a second menu from a first menu and sending the second menu to another location at final decision. This change did not impact the patentability analysis. The court affirmed the PTAB’s finding and agreed the patent claims are directed to functionality only - the ability to generate menus. The court rejected the appellant’s contention that the difficulty of the limitations is relevant to inventiveness, and pointed to the specification for concessions that the limitations were directed to ordinary implementation techniques.
As to certain dependent claims the PTAB had found not invalid, the court again turned to the specification to find that the purported inventive techniques were already known and found no disclosure of the technological implementation there. The court also relied on concession at oral argument that in the prior art, restaurants were able to track customers’ orders. As to other dependent claims the PTAB had found not invalid, the court reversed the district court’s finding that the use of handwriting and voice capture techniques were inventive, as there was no description of how these would be inventive, and these techniques themselves were not inventive and already known. In so concluding, the court found all claims of all asserted patents invalid.Read More
The Court held that the ‘877 and ‘766 patents are related to unpatentable abstract ideas. The stated aim of the patents is to automate the migration of data between two computers. This is not sufficient under step one of Alice.
The patents fail step two of Alice. Here, the claim instructs a practitioner to (1) provide configuration information, (2) generate an extraction plan, (3) extract the configuration settings, (4) generate a transition plan, and (5) transition those settings to a new computer. These steps, both individually, and as an ordered combination, do not disclose an inventive concept. They merely describe a generic computer implementation, using “routine, conventional activities,” of the abstract idea, “which is insufficient to transform the patent-ineligible abstract idea into patent-eligible subject matter.”Read More
The ‘506 patent fails the first step of the Alice framework, because the challenged claims of the ’506 patent are directed to the abstract idea of “providing commercial services over the Internet.” The ‘506 patent fails the second step of the Alice framework as well. The PTAB explained that the computer-related limitations that require nothing more than the routine and conventional use of a computer to receive, retrieve, and communicate information, and the handling of information requests do not transform the nature of the claims into a patent-eligible application of the abstract idea. To be limited meaningfully, the claim must contain more than mere field-of-use limitations, tangential references to technology, insignificant pre- or post-solution activity, ancillary data-gathering steps, or the like.Read More
The court concluded that the ‘092 patent does not claim patentable subject matter under 35 U.S.C. § 101.
Under the first step of the Alice framework, a comparison of the '092 patent claims with prior art revealed that the claims focus on the functionality of conducting a transaction and disclose no more than the abstract idea of conducting transactions using conventional computer components, a telephone and centralized data storage.
The '092 patent, when considered with all of its components, lacks inventive concept, and fails the second step of the Alice framework. Here, the patent was not directed at overcoming problems in computer technology, rather the claims relate to performing commercial transactions using conventional equipment. The claimed videophone can consist of generic computer components and a telephone that perform ordinary functions in a conventional manner. The '092 patent presents a risk of broad preemption of the abstract idea of conducting transactions over a network.Read More
The Federal Circuit found that the claims of each of the patents entail an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).
The system described in the patents includes: network devices; information source modules (“ISMs”) which send IP usage data in real time from network devices to “gatherers”; “gatherers” which gather information from the ISMs, normalize data from the various types of ISMs, and serve as a distributed filtering and aggregation system; a central event manager (“CEM”) which provides management and control of the ISMs and gatherers; a central database; a user interface server; and terminals or clients. The patents describe that the components of the system are arrayed in a distributed architecture that minimizes the impact on network and system resources by collecting and processing data close to its source, thereby reducing congestion and network bottlenecks.
The claims-at-issue require or depend upon enhancing data in a distributed fashion. That is, the claims require a specific structure of various components; the components are not merely combined in a generic manner, but instead are purposefully arranged in a distributed architecture. Though the solution requires arguably generic components, the Federal Circuit found that the claim’s enhancing limitation necessarily requires that the generic components operate in an unconventional manner to achieve an improvement in computer functionality.Read More
The court reevaluated in view of the Federal Circuit’s decision in Electric Power Group, where the Federal Circuit explicitly stated that “‘merely selecting information, by content or by source, for collection analysis and display does nothing’ to elevate a patent beyond a mere abstract idea.” The ‘626 patent is directed to a system that translates messages regarding freight materials and allows recipients to transmit messages in turn. Such data collection is an abstract idea. The claims did not add an inventive concept as they did not rely on any technological advancement. But the court denied the motion as to the ‘724, ‘686, and ‘001 patents because these relied on GPS technology to monitor freight traffic, which the court could not conclude as a matter of law at this stage were invalid. The court also could not invalidate the ‘150 patent at this stage because using “engine frequency to measure run time is innovative technology.”Read More
The court found there was no abstract idea in the claims because one step required finding a physical location of a device. The court did not go on to analyze whether there was an inventive concept.Read More
The court found Grandstream’s analysis that the system had been long-practiced conflated Section 102/103 with Section 101 invalidity analysis. The court did not agree the claim was abstract but was rather a “concrete, physical task.” The computer system was not a generic-functioning computer but rather a “computer station for a particular, concrete method of communication inherently tied to a machine with particular physical capabilities.” Further, “[t]he information is converted from and to physical sound waves by a machine.” Having so decided, the court did not analyze the inventive concept.Read More
The court found no fault with the district court’s conclusion that the steps of the abstract claims could be performed mentally as the inventors admitted to performing the steps mentally themselves. The court rejected Synopsys’s contention that even if the claims could be so performed mentally, they were intended to be performed using computer technology, because the focus is on the claims and their scope, and the claims did not call for such technology. The court found no error that the district court did not expressly define the abstract idea. Turning to the inventive step, the court found no “technical solution” embodied in the claims.Read More
The court noted a recent outcome in a related case: CG Technology Development LLC v. Big Fish Games, Inc., No. 2:16–cv–00857–RCJ–VCF, 2016 WL 4521682 (D. Nev. Aug. 29, 2016), a case which involved seven of the eight patents at issue in the present case. In the related case, the Court concluded that six of those seven patents were patent-ineligible under Alice: ’628, ’169, ’267, ’924, ’394, and ’417. As for the ‘RE818 Patent, the Court had determined it was patent-eligible but the related complaint had failed under Rule 12(b)(6) to state a plausible claim upon which relief could be granted.
In the present case, the court analyzed the patent eligibility of the ‘832 patent utilizing the framework from the Court’s recent decision in the related case and held that “Claim 1 is directed to the abstract concept of using information gathered by observing game events to determine the best options and strategies for a player’s next move.” The Court further explained that “the tasks of providing game advice, managing wagers, and matching participants ... are ... tasks that humans regularly perform in gaming.” Regarding the “something more” consideration, the court held that the “only limitations on the abstract idea are that it involves a server and a remote processor—components which are extraordinarily commonplace in online gaming. These physical devices are used to implement the abstract idea.”
Finally, with regard to the ‘RE818 Patent, based on the Court’s prior determination in the related case, the Court held that it was patent-eligible but that Plaintiffs had failed under Rule 12(b)(6) to state a plausible claim upon which relief could be granted for failure to identify any specific device. The Court granted leave to amend the complaint on this patent.Read More