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
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 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
The district court dismissed the complaint with prejudice holding that the claims were directed to patent-ineligible subject matter under 35 U.S.C. §101. The panel reviewed the district court’s holding de novo, but quickly found that the alleged invention ineligible. The court agreed with the district court’s characterization of the abstract idea as “the concept of analyzing records of human activity to detect suspicious behavior” and noted the specification’s description of the invention as “relat[ing] to a system and method of detecting fraud and/or misuse in a computer environment based on analyzing data such as in log files, or other similar records, including user identifier data.”Read More
In affirming the district court’s decision, the Federal Circuit found that the ’379 patent’s claims were directed to wirelessly communicating regional broadcast content but were not directed to how to do so on a cellular telephone. While the patent specification contained flow charts showing the provision of content over the internet, nothing showed how to implement the broadcast to cellphones. The Federal Circuit rejected the patentee’s analogies to other cases and noted that the patent was not directed to a solution for a technological problem and that the claims were not directed to an improvement in cellular telephones.
As to the second step in the Alice inquiry, the Federal Circuit determined that the claims simply recite generic features of cell phones and routine functions of cell phones. These included storage mediums, graphical user interfaces and transmitting and receiving signals. It rejected the patentee’s argument that the use of a downloadable application for presenting a graphical user interface on the cellphone was novel by noting that while it may have been “novel” as of the priority date, the application described functionally and did not “cross out of the abstract idea” category. Instead “the claims are drafted in a way that would effectively cover any wireless delivery of out-of-region broadcasting content to a cellular telephone via a network.”Read More
The Federal Circuit determined that the basic concept of customizing a user interface is an abstract idea despite the fact that the claims recited physical components. It noted the district court’s statement that the specification made clear that the physical components recited in some of the claims merely provide a generic environment to carry out the classifying and sorting of digital images in an organized manner. The Federal Circuit rejected the argument that wireless streaming of media was not routine, conventional or well-known as of the patent’s priority date and found that the “specification describes the function of streaming content to a wireless device, but not a specific means for performing that function.” It also rejected the argument that the claims recited a customized user interface and noted that the court had previously found that the customization of information based on information about the user is an abstract idea itself.
The Federal Circuit also determined that the claims failed to contain an inventive concept. Specifically, it stated that the claim at issue required a “network based delivery resource” and then pointed to the specification which “makes clear’ that “any technology capable of wireless communication of audio information to the device would be covered.”Read More
The court found that the claims were directed to the abstract idea of retrieving and arranging documents based on frequency of use. It noted that the claims were only defined in terms of their functions which related to this abstract idea, and also noted that the “patents do not involve special software or hardware,” and that the patents themselves state that “a person of skill in the art could implement the invention on any commercially available computer with the functionality for ‘manipulating graphical objects in a three dimensional space.’”
The Court then determined that neither the problem nor solution the patents addressed (limited screen space and arranging documents based on frequency of use) was rooted in computer technology, and in fact, the patentee even admitted that the patent was intended for use with a typical computer. “But applying a commonplace method of organization to a particular technological environment does not constitute an inventive concept, and the patents here fall squarely within the type of inventions that the Supreme Court explicitly found invalid in Alice."Read More
The decision of the Board was affirmed per curiam. The Federal Circuit agreed with the Patent Trial and Appeal Board that the claims are unpatentable under 35 U.S.C. § 101. The Board found that the claims in dispute were directed to the abstract idea of a mathematical correlation, citing the specification. The mathematical functions and sources of data involved were already known in the art. The Board found that there was no inventive concept, finding effectively harmless error in the petitioner's expert’s demonstration of prior art calculations.Read More