The Software IP Report

How Easy Can Patent-Eligibility Analysis Be?

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

Claims directed to “providing an internet third party data channel” were held invalid at the pleadings stage under 35 U.S.C. § 101 and the two-part Alice patent-eligibility test because the claims attempt “to monopolize the abstract idea of monitoring a preexisting data stream between a server and a client for a specific condition and modifying that stream when that condition is present.”  Blackbird Tech LLC v. Cloudflare, Inc., No. 3-17-cv-06112 (N.D. Cal. Feb 12, 2018).

Representative claim 1 of U.S. Patent No. 6,453,335 is about as lengthy as the analysis in the court’s opinion (two pages, including the case caption):

1. A method for providing an internet third party data channel, said third party data channel being established within an existing data channel between an internet server and an internet client, said third party data channel connecting a data source distinct from said internet server to said internet client, said method including the steps of:

a) using a processing device distinct from said internet server for monitoring said existing data channel for a data communication having a predetermined property, said data communication having an intended recipient of one of said internet server and said internet client,

b) upon detection of said data communication, performing:

b1) the step of accessing said data source to obtain third party data,

b2) a step selected from the group consisting of the step of modifying said data communication in response to said third party data and the step of replacing said data communication in response to said third party data to obtain a resultant data communication, and

b3) the step of sending said resultant data communication to said intended recipient.

Citing Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the court thought that this and another representative claim simply recited applying generic computing technology to the abstract idea. A condition for the recited monitoring recited in dependent claims, specifically, “a data transmission rate below a set threshold,” was not inventive, but rather was “simply a conventional application of the broader idea.”