The Software IP Report
Alice Roundup, Late Summer 2015 – Part 1: Patent-Ineligibility under 35 U.S.C. § 101
By Charles Bieneman
Categories: Patent Eligibility, Software Patents, The Software IP Report
District courts have been busy considering, and invalidating, patents under 35 U.S.C. § 101 and Alice Corporation Pty. Ltd. v. CLS Bank International. My next post will discuss cases — and there are some — where courts have found patent-eligible subject matter under Section 101, and have allowed claims to be asserted. However, as the following makes clear, patent owners continue to face obstacles in demonstrating patent-eligibility of many computer-implemented inventions.
Section 101 Invalidity at the Pleadings Stage
Boar’s Head Corporation v. DirectApps, Inc., No. 2:14-cv-01927-KJM-KJN (E.D. Cal. July 27, 2015). Granted Rule 12(b)(6) motion to dismiss based on patent-ineligibility under 35 U.S.C. § 101. Representative claim recites “[a] method for communicating information associated with emergency calls communicated to emergency response centers.” After deciding that claim construction was not necessary, the court found that the patent was directed to “essentially the abstract idea of organizing phone call data.” There was no patentable innovation because the claims simply recited use of generic computers. Purported limitations concerning displaying data were “simply examples of a computer generating data in response to inputted data.”
Personalized Media Communications LLC v. Amazon.com Inc., No. 13-1608-RGA (D. Del. Aug. 10, 2015). Granted motion for judgment on the pleadings of patent-ineligibility of claims of seven patents. Representative patent claim recited “[a] method of providing data of interest to a receiver station from a first remote data source, said data of interest for use at said receiver station in at least one of generating and outputting a receiver specific datum.” The court found the claim to be “directed to the abstract idea of using personal information to create a customized presentation.” There was no additional inventive concept.
Everglades Game Tech. v. Supercell, Inc., No. 14-643-GMS (D. Del. Aug 21, 2015). Granted motion to dismiss, finding that “that the concept of promotional games-‘random drawing sweepstakes, instant win packaging, lotteries, collect & win and match & win contests’-is an abstract idea.” The claims recited no meaningful limitations on this abstract idea.
Inventor Holdings v. Bed Bath & Beyond, No. 14-448-GMS (D. Del. Aug. 21, 2015). Granted motion for judgment on the pleadings where patent was directed to the abstract idea of “a retailer allowing a customer requesting goods remotely-such as via the internet or by phone-to defer payment to an in-person location.” There was no additional inventive concept: mere “generic references to computers” were “not sufficient to render the claims patentable.”
Novo Transforma v. Sprint Spectrum L.P., Nos. 14-612-616-RGA (D. Del. Sept. 2, 2015). Granted motion for judgment on the pleadings that patent claims were invalid under 35 U.S.C. § 101. Claims that recited a “computer system that receives a payload in one media form, translates it into a different media form, and delivers the translated payload” were directed to the abstract idea of “translation.” There was no significant additional innovation to overcome the abstract idea: “[p]erforming the translation function over the Internet is not an inventive concept.”
Gammino v. AT&T Corp., No. 12-666-LPS (D. Del. Sept. 8, 2015). Granted motion for judgment on the pleadings that patent claims were invalid under 35 U.S.C. § 101. Patent claim directed to a “method for placing a telephone call through a central office from a telecommunications device according to a desired method of making payment” was “directed to the abstract idea of ‘allowing a buyer to select a method of payment for a service.'” There was no significant technical innovation: “[a]lthough claim 1 is limited to a particular technological environment – telephony – this is not enough for patent eligibility.”
Blue Spike, LLC v. Google, Inc., No. 14-cv-01650-YGR (N.D. Cal. Sept. 8, 2015). Granted motion motion for judgment on the pleadings of Section 101 patent invalidity. A representative patent claim recited a “method for monitoring and analyzing at least one signal.” The patent was directed to computer modeling “the highly effective ability of humans to identify and recognize a signal.” The court found that “the claims at issue are generally directed to the abstract concept of comparing one thing to another.” There was no inventive concept: “merely discuss using routine computer components and methods (e.g., general purpose computers, compression, and databases) to accomplish this task with, in certain circumstances, greater efficiency than a human mind could achieve.”
Section 101 Invalidity on Summary Judgment
Telebuyer, LLC v. Amazon.com, Inc., No. 2:2013cv01677 (W.D. Wash. July 23, 2015). Granted summary judgment of invalidity on seven patents whose “claims are directed to the abstract idea of facilitating commerce by connecting informed buyers and sellers—a fundamental economic principle that can be traced to society’s transition from feudalism to the earliest forms of capitalism.”
Joao Bock Transaction Systems, LLC v. Fidelity National Information Services, Inc., No. 3:13-cv-223-J-32JRK (M.D. Fla. Aug. 10, 2015). Granted summary judgment of invalidity of claims of U.S. Patent Nos. 7,096,003 and 6,047,270. As previously reported on this blog, some claims form the’003 patent had previously been held patent-ineligible. Here the court held claims directed to the abstract idea of “account monitoring and authorization,” which represented in several claimed embodiments, including, for example, the account holder pre-supplying account limitations to the institution and the institution then completing the transaction or not based on those limitations.” No computer technology had been invented, and therefore there was no inventive concept.
Intellectual Ventures v. Capital One Financial, No.: PWG-14-111 (D. Md. Sept. 2, 2015). Reversed Special Master and granted summary judgment that claims directed to viewing XML documents in different formats were directed to “the abstract idea” of “organizing, displaying, and manipulating data related to business documents.” Patent claims that simply recited a user interface for this concept did not include an innovation to overcome the abstract idea.
Exergen Corporation v. Thermomedics, Inc., No. 13-11243-DJC (D. Mass. Sept. 15, 2015). Granted motion for summary judgment of invalidity under 35 U.S.C. § 101. Patent claimed “a method of measuring an individual’s body temperature based upon radiation and temperature measurements taken at the temporal artery at the side of the forehead.” There was not serious “dispute that the four claims at issue are directed to patent-ineligible concepts.” The claims were “directed to applying mathematical models of natural thermodynamic relationships, so the § 101 analysis proceeds to the second step,” determining whether the claims included an inventive concept. The court found there was no inventive concept because “[n]o matter how novel the concept of measuring body temperature from forehead skin temperature or how valuable the contribution to the medical community, this idea as set forth in the asserted claims is fundamentally a discovery of a natural relationship between skin temperature and body temperature.”