The Software IP Report
Data Management Claims Held Patent-Ineligible
By Charles Bieneman
Categories: Patent Eligibility, Software Patents, The Software IP Report
A court granted a motion to dismiss under FRCP 12(b)(6) where claim construction was not needed to determine that claims of three patents were invalid under 35 U.S.C. § 101 based on the two-part Alice / Mayo patent-eligibility test. Intellectual Ventures I LLC v. Erie Indemnity Company, Nos. 1: 14-cv-00220, 2:14-cv-01130 and 2:14-cv-01131 (W.D. Penn. Sept. 25, 2015). What follows is a very brief summary of a lengthy opinion that addressed a standing issue before providing a lengthy excursus on Section 101 law before and after Alice Corp. v. CLS Bank, and finally addressing the patent-eligibility of three patents in turn.
U.S. Patent No. 6,519,581 was entitled “Collection of Information Regarding a Device or a User of a Device Across a Communication Link.” Its claims amounted to “a method for performing the abstract idea of gathering, storing, and acting on data based on predetermined rules,” and “using mathematical formulas and code sequences do not transform it into patent-eligible subject matter.”
U.S. Patent No. 6,510,434 was entitled “System and Method for Retrieving Information From a Database Using an Index of XML Tags and Metafiles.” Its claims were “directed to creating an index and using it to search for and retrieve data, which numerous courts have held to be an abstract idea.” The claims “fail[ed] to provide an additional feature that would transform the abstract idea of creating an index and using that index to search for and retrieve data into patent eligible subject matter.”
U.S. Patent No. 6,546,002 was entitled “System and Method for Implementing an Intelligent and Mobile Menu-Interface Agent.” The court found that “that the ‘002 Patent as a whole claims the abstract idea of remotely accessing user specific information.” The claims at issue could “be loosely analogized to calling a person from one location in order to obtain information located in another place; this type of interaction amounts to a general ‘method of organizing human activity.'” The claims “lack[ed] the requisite inventive concept that would transform the abstract idea of remotely accessing user specific information into patent eligible subject matter.”