The Software IP Report

Digital Advertisement Display Patent Claims Survive Alice

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

Patent claims directed to displaying digital advertisements have survived a rule 12(b)(6) motion alleging patent-ineligibility under 35 USC § 101 and Alice Corp. Pty Ltd. v. CLS Bank Int’l., although the court did state that the defendant’s motion could be renewed after claim construction and discovery.  T-Rex Property, AB v. Cedar Fair, L.P., Civil No. 16-2018 (DWF/BRT) (D. Minn. June 2, 2017)

Asserted claims of each of U.S. Patent Nos. RE39,470, 7,382,334, and 6,430,603, are directed to systems and methods for managing digital advertising displays. The defendant alleged that all of these claims were “directed to the abstract idea of collecting display instructions from a third party, organizing the display content at a central computer, and then displaying the content on conventional electronic displays.” According to the defendant, the claims were directed to the “fundamental economic practice” and “basic methods of organizing human activity” by reciting “advertising on a digital medium” and “notifying flight passengers of departures.” And, addressing the second prong of the Mayo/Alice test, the defendant alleged that these abstract concepts were implemented using conventional and generic computing functionality.

But the plaintiff was able to convince the court that, at least construing all reasonable inferences in the plaintiff’s favor at the pleading stage, the patent claims, even if they did recite an abstract idea, recited significantly more by way of “coordinating and controlling electronic displays and [describing] specific interconnected hardware and software.” The plaintiff also pointed to purported technical solutions to “particular problems with the way advertisements and certain other information could be presented.”

Lessons for Practice

One might think that these days the word “advertising” is a patent-eligibility death knell.  And sometimes advertising-related patent claims fail to survive Alice – but the present court joins others that have been open to finding advertising-related subject matter to be patent-eligible.  The lesson for patent owners?  Focus on showing the claims present a technical solution; even burdened by unfortunate words such as “advertising,” technical-seeming claims have a chance of surviving Alice.