The Software IP Report
CAFC: User-Tailored Data Is Patent-Ineligible Abstract Idea
By Charles Bieneman
Categories: Patent Eligibility, Software Patents, The Software IP Report
A Federal Circuit panel easily affirmed a lower court holding of patent-ineligibility of claims “directed to systems and methods for allowing computers to process data that are dynamically modified based upon external-to-the-device information, such as location and time.” Evolutionary Intelligence, LLC v. Sprint Nextel Corp., No. 2016-1188 et al. (Fed. Cir. Feb 17, 2017) (opinion by Judge Lourie, joined by Judges Moore and Taranto) (non-precedential). The lower court had held all claims of US Patent Nos. 7,010,536 and 7,702,682 invalid as patent-ineligible under 35 USC § 101.
The District Court had granted a motion to dismiss/motion for judgment on the pleadings,
concluding that all claims of the asserted patents are invalid under § 101 as being directed to the abstract idea of “searching and processing containerized data.” The court held that the invention merely computerizes “old forms of information processing,” such as those used in “libraries, businesses, and other human enterprises with folders, books, time-cards, ledgers and so on.”
On appeal, the patent owner, futilely as it turned out, addressed both prongs of the Alice/Mayo test. First, the patent owner argued that the claims “are not directed to an abstract idea, but rather to an improvement in the functioning of the computer itself.” Second, the patent owner argued that the claims overcame any abstract idea by “containing an inventive concept because they recite a specific arrangement of particular structures, operating in a specific way.”
Bunk, said the Federal Circuit. A host of cases had
held 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.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (describing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)); see Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“collecting information, including when limited to particular content,” is “within the realm of abstract ideas”).
The court went on to distinguish this case from the claims at issue in the Enfish case; unlike the claims there, which improved the operation of a computer independent of any specific functionality, the present claims “are directed to selecting and sorting information by user interest or subject matter, a long-standing activity of libraries and other human enterprises.” And there was no inventive concept, just an implementation of an abstract idea using generic computer concepts.
Lessons
We have said it before, and we will say it again; despite the large gray expanse that occupies much of present jurisprudence under 35 USC § 101, Alice and its progeny have left in its wake some cases that are easy. While Enfish is properly celebrated for establishing that claims directed to data processing, and nothing more, can be patent-eligible, the present case illustrates that such claims nonetheless remain particularly susceptible to Section 101 patent-eligibility challenges. Enfish and its progeny provide lessons for walking a careful line in patent claim preparation and prosecution.