The Software IP Report
Claims Directed to Controlling a Multiple-Computer System Held Not Patent-Eligible
By Charles Bieneman
11/16/2013
Categories: Patent Eligibility, Software Patents, The Software IP Report
A Rule 12b(b)(6) motion alleging a failure to assert infringement of patentable subject matter has been granted where the asserted patent claimed a method for triggering an event in a system that includes multiple computers. UbiComm, LLC v. Zappos IP, Inc., Civil Action No. 13-1029-RGA (D. Del. Nov. 13, 2013).
The only independent claim of United States Patent No. 5,603,054 recited:
1. A method of triggering a selected machine event in a system including a multiplicity of computer controlled machines and a multiplicity of users, each computer controlled machine being capable of performing a one of the multiplicity of types of machine events, some of the computer controlled machines being stationary and others of the computer controlled machines being mobile, the method comprising the steps of:
selecting a type of machine event to be triggered;selecting triggering properties of said system necessary for triggering said selected machine event;
selecting triggering conditions of an identified user necessary for triggering said selected machine event;
perceiving said triggering conditions;determining whether said triggering properties are met; and
triggering said selected machine event when the triggering properties are met and the triggering conditions are perceived.
After construing claim terms that the plaintiff had contended needed construction, the court turned to analyzing the claims for patent-eligibility under 35 U.S.C. § 101. The claims here were directed to “the fundamental concept of a conditional action.” Although the claims “incorporate various structural components,” the court’s task was “not to determine whether there are sufficient limitations, but instead to determine whether and what ‘the abstract idea at the heart’ of the claim is.” And the court agreed “with the Defendant that the abstract idea at the heart of the claim is the very concept of a conditional action.”
Having identified that abstract idea, the court turned to the question of whether remaining claim terms relieved the claim from preempting all uses of the abstract idea. The court agreed with the defendant that the claim “imposes no meaningful limitations on the idea of conditional action.” The only addition to the abstract idea was “the use of the idea in a computing environment.” Making “generic references to computers” was “not sufficient to render the claims patentable.”
The plaintiff had argued that this case was like Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013). However, the court distinguished Ultramercial, because the claims there had many specific steps that were not “token pre- or post-solution steps,” but were “central to the solution itself.” In contrast, the claim here was not limited “beyond the abstract idea, other than to limit the claims to two types of general-purpose computers and the occurrence of the machine event.”
The dependent claims likewise did not recite patentable subject matter, because they at most recited “data gathering” steps that, under Federal Circuit precedent, were not enough to “make an otherwise nonstatutory claim statutory.”