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
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.
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
The decision of the Federal Court was affirmed per curiam. Looking at the first step of Alice, the Federal Court agreed that the claims were directed toward the abstract idea of basic sales techniques executed with the aid of a computer. The court distinguished the patents-in-suit from the patents in DDR Holdings for three reasons. First, the patents are not directed toward solving a new problem, but only increased the efficiency of solving an existing problem. Second, the patents do not provide a new solution, they merely combine sales techniques and telemarketing systems. And third, the patents do not describe a new way of manipulating technology beyond its conventional use. The court notes that claims in the asserted patents were directed toward a fundamental economic concept that falls not only under the Alice analysis but within the Bilski analysis as well. Looking to the second step of Alice, the court found that the claims fall short of transforming the abstract ideas into patent-eligible subject matter. The court notes that just because the claims are directed at making a generic computer system more efficient, this is not enough for patent protection.Read More
The District Court denied the defendant’s motion to dismiss for failing to meet its burden to show the claim it had selected was in fact representative of the remaining patents and claims in dispute, and for its failure to identify a consistent abstract idea. The court further held that it was not inclined to dismiss the claims without claim construction or appropriate discovery. Finally, the court found that potential factual issues also precluded dismissal at this stage.Read More
The court found the claims are directed to the abstract idea of “identifying and categorizing files based on a set of predetermined criteria.” This merely computerizes a long-standing task, identifying and categorizing illicit files, and these functions can be performed by humans. Limitations describing the type of source code used to identify files were merely routine computer applications. Plaintiffs’ argument on these limitations amounts to a novelty argument.Read More
The court found the claims are not directed to an abstract idea but instead are directed to “particular improvements over prior art multimedia data indexing techniques that render such data accessible in real time.” The court noted that without a factual record it could not conclude that the claims could be wholly performed by the human mind. The court found the defendant’s challenge of the inventiveness amounted to a challenge of the novelty of that invention instead. The court also found that the fact that the prior art received patent protection was suggestive of the patentability of the claims here.Read More
The PTAB found the claims were directed to the abstract idea of a bailment scheme for storing and tracking containers, a longstanding economic practice. The use of a remote device communicating with a computer, categories of data to track the bailment, and “facilitating delivery of more boxes than requested” (which the court analogized to giving a “baker’s dozen”) were not inventive and did not render the claims patent-eligible.Read More
The court rejected both parties’ formulation of the abstract idea, finding that the claims are directed to “preparing a video in streaming video format for sharing over a computer network.” Court considered the problems patentee purported to solve and rejected these, by reference to the specification citations of preexisting technology or by concessions from the patentee in briefing. The limitations individually and as an ordered whole did not add an inventive concept as they merely recited conventional computer functions, such as using the Internet.Read More
The court considered only those claims the Plaintiffs explicitly discussed in their opposition to Defendants’ selection of a representative claim. The court concluded the claims are directed to the abstract idea of providing alert notifications to multiple persons, a common business activity before the issuance of the patents. The court rejected arguments of the role of types of alerts and delivery mechanisms as novelty arguments. The claims lacked an inventive concept as they only used routine and conventional functions of existing technology. The claims did not provide a solution for a problem created by new technology but conceded that the claims implemented features that used existing standards and technology.Read More
The court found that factual issues precluded grant of the motion, including dispute on the number of asserted claims and which claims were representative. Further, “the briefing makes clear that the parties dispute the proper interpretation of the claims, such that the Court finds itself unable to develop a ‘full understanding of the basic character of the claimed subject matter,’” citing Content Extraction. Court declined to select representative claims.Read More
The Federal Circuit agreed with the district court that the claims were directed to abstract matter, citing precedent finding that collecting information is an abstract idea, even when limited to specific content. The court distinguished the claims here from those found not invalid in Enfish, as those claims were directed to “improvement in computers as tools”, but the instant claims only used computers as tools. Turning to the second step of Alice, the Federal Circuit found no inventive concept. The claims did not even require new source of type of information, or new techniques for analyzing it, which potentially could have added inventive material.Read More
The court quickly stripped down the alleged invention as unpatentable, stating that “[o]nce the generic, computing terminology is removed, it is clear that the ’025 Patent claims are directed at the abstract concept of administering a test: The ’025 Patent would provide users with instructional materials including test questions, collect answers to the questions, and send answers to a central server to be reviewed by a manager.”
The court further found that the claims were directed to such generic computer components as: a “local computer,” a “training program including an interactive test having questions,” a “training session display,” a “first human-computer interface ... enabling an employee to enter answers to questions,” a “low bandwidth connection,” a “remote computer server at a central location,” and a “second interface enabling a manager to access” the test information in real time. Accordingly, the abstract idea was not transformed into an “inventive concept.”Read More
The court described the patented method as: “permitting users to input a phone number on the web or a mobile phone app, determine the number’s carrier, search the carrier’s name database, and return the name associated with the phone number.” Accordingly, the abstract idea was reduced to: looking up a name associated with a phone number.
Patentee attempted to fend off the motion arguing that the claims were “not simply directed to finding out the identity of the person associated with a phone number, but are directed to a particular way of doing so” not previously available and arguing that the “particular” way employs a generic web browser to “connect[ ] individual users over the Internet to proprietary carrier CNAM databases via an SS7 interfacing node.” The court flat out rejected this argument because Greenflight had not invented the SS7 interface and that Greenflight had asserted in its counterclaim that “use of SS7 technology ‘is such a common occurrence that the telecom industry simply refers to it as a name ‘dip.’” Accordingly, the court rejected the argument stating that “the patent employs industry-standard technology to perform a longstanding business practice, with no asserted improvement other than to use generic internet applications to obtain certain customer side advantages.”Read More
Reviewing the district court’s finding de novo, the panel made its opinion clear from the start: “We begin our analysis at step one. On its face, representative method claim 1 is directed to an abstract idea; namely, a loan-application clearinghouse or, more simply, coordinating loans. …Indeed, claim 1 is directed to a practice similar to ‘fundamental economic practice[s]’ found abstract by the Supreme Court. Alice, 134 S. Ct. at 2357. …. the concept of applying for loans and receiving offers is also long prevalent in our financial system.” The panel likewise held that the claim did not transform the abstract idea and merely the automation of a fundamental economic concept.
In addressing LendingTree’s contention that simultaneously showing competing loan offers added an inventive concept, the panel noted that LendingTree’s contention closely mirrored claims which had been held abstract in Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1318, 1324 (Fed. Cir. 2016). The Mortgage Grader claims had “enabled a borrower ‘to search [a] database to identify a set of loan packages’ from a plurality of lenders and ‘to compare the loan packages within the set,’ and that also was configured ‘to display to the borrower an indication of a total cost of each loan package in the set.’ Accordingly, the panel did not find LendingTree’s contention persuasive and the claims were found to be directed to ineligible subject matter.Read More
As a preliminary matter, the court did not definitively find the patents patentable. Rather, the court explained that it had not had “the benefit of any form of expert testimony amplifying the language and claims of the patents-in-suit enabling the court to determine more definitively whether the patents-at-issue are truly a technological improvement over prior art.” The court held that based on the limited record, it could not determine that the patents-at-issue were patent in-eligible.
The ‘724 Patent: The court explained that the '724 patent taught an innovative construct—involving satellite communication receivers and GPS receivers—beyond a simple generic computer.
The ‘001 Patent: The court did not reveal its reasoning, but stated that “based upon the descriptive information provided in the complaint, augmented by the patent, it would appear that the system described in the '001 patent meets the criteria of Section 101 at this stage and is facially patentable.”
The ‘686 Patent: The apparatus claims of the '686 patent are tied to a particular machine, specifically non-generic wireless communication units. These units are described as containing a global position sensor and “a selectable port wiring interface.” The Court explained that these special features were sufficient at this stage to defeat a claim of invalidity
The ‘626 Patent: The court held that based on the specialized monitoring features described in Claim 4 of the '626 patent, coupled with the format translation, the complaint “appea[ed] to describe” an innovative technological advancement.
The ‘150 Patent: The court refused to dismiss the ‘150 patent as patent-ineligible, because the innovative technology “allegedly” improved the measurement of fuel consumption. Traditional systems measure engine run time based upon fuel consumption. The '150 patent monitors the frequencies of the engine alternator corresponding to the engine's speed.Read More
The PTAB held that the patent was based on patent-ineligible subject matter, because the claims of the ‘603 patent were directed to the abstract idea of using an amusing game or an external event to reveal the outcome of a lottery.
The patent did not contain “something more” so as to transform the abstract idea into patent eligible subject matter. The PTAB explained that the claims did not contain “something more” because the claims did not recite any limitations that transform them into a patent-eligible application.Read More
The court found the patents invalid. The court explained that under the first step of the Alice analysis, the claims in the '959 and '267 Patents were directed to “the abstract idea of distributed processing akin to the military's command and control system.”
The court explained that under the second step of the Alice analysis, whether viewed individually or as an ordered combination, the claims of the '959 and '267 Patents do not contain an inventive concept. The claims do little more than task generic computers with generic functions. Even the central idea of the claims – the use of a “network” of computers – uses a generic network. The claims simply provide for completing a task or process by distributing it downward via a hierarchical series of “handlers” located on generic computers spread throughout a generic network.Read More