The Software IP Report

Factual Dispute Precludes Summary Judgment on Alice / § 101 Motion

Finding that competing expert declarations raised a factual question concerning whether claims recited an inventive concept, a  Delaware magistrate judge found that a summary judgment motion for invalidity of claims of U.S. Patent No. 8,490,123 under 35 USC § 101 and the Mayo/Alice test should be denied. S.I.SV.EL. Societa ltaliana per lo Sviluppo Dell’Elettronica S.p.A v. Rhapsody International Inc., Civil Action No. 18-69-MN-CJB (March 12, 2019). A defense expert said that there was no novelty in an ordered combination recited in the claims, and the plaintiff’s expert said there was. This was enough for the court to deny the summary judgment motion.

The ’123 patent is directed to “generating a user profile on the basis of playlists.” Representative claim 1 recites:

A method of generating a user profile for a given user from at least one first playlist including a first sequence of content and being associated with the given user and stored on a media device, said method comprising:

automatically searching for the at least one first playlist among a plurality of playlists, wherein the plurality of playlists includes at least one of a second playlist and a third playlist, wherein the second playlist has a second sequence of content and is associated with a different user and the third playlist has a third sequence of content and is associated with the given user, and each playlist of the plurality of playlists including at least one identifying characteristic of content stored on the media device;

analyzing the at least one first playlist and automatically deriving from the at least one analyzed first playlist at least one playlist feature expressing at least one property of the at least one first playlist, the at least one playlist feature comprising an occurrence frequency or at least a content relationship of the plurality of playlists; and

automatically generating a user profile for the given user based on the analyzed at least one first playlist and the derived at least one playlist feature;

wherein at least one of the said searching, analyzing, and generating comprises use of computerized hardware including a processing element.

The court seemed to find compelling the Defendants’ contention that “[t]he claims of the ‘123 patent are directed to the abstract idea of creating a user profile based upon lists of what a user likes.” But instead of making a finding on the first prong of the subject matter eligibility the court simply assumed arguendo that the defendant was correct. Why? Because the court was able to say that, under the second prong of the patent-eligibility test, the claims recited an inventive concept beyond the abstract idea.

The court began its “inventive concept” analysis by noting “that there is surely more in the claims beyond ‘creating a user profile based upon lists of what a user likes.’” There were specific limitations on creating the user profile and determining playlist features. But under “Alice’s step two, [did] these additions, individually or viewed as an ordered combination with the rest of the claim elements, amount to the ‘something more’ that defines an inventive concept?”

Everyone agreed that playlists were not new. But was there something in the claims that was unconventional, more than an application of generic technology, or something “necessarily rooted in computing technology?” (Enumerating these questions, the court cited Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass n., 776 F.3d 1343 (Fed. Cir. 2014), BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).)

The defense expert had provided one paragraph in his declaration stating that “[a]s an ordered combination, the claimed limitations were still well-known and conventional to a [person of skill in the art].” This, and a conclusory sentence that “[s]earching for a user’s playlist(s), analyzing identified features of content from the user’s playlist(s), and generating a user profile based upon analysis of those features was a well-known and conventional methodology far before the relevant date for the ‘123 patent,” were all the defense expert had to say to address Alice prong two.

The plaintiff’s expert said a bit more, and “included more than just conclusory statements about ‘unconventionality.’” Notably, he talked about a problem, and how the patent addressed that problem in a novel way, specifically “a cold start problem: recommendations to new users are not useful until the user has used the system for a meaningful period [ of] time, allowing the system to infer their interests from their ratings or behavior.” Moreover, the court thought that the “patent specification seems to speak to what [the expert] was getting at here;” the patent specification discussed problems with playlists, and inefficiencies caused to users. And the plaintiff’s expert further explained that the claims recited a novel  ordered combination of elements that solved problems with recommender systems.

Thus, even though the claims appeared uncomplex to the court, and the court appeared skeptical of patent-eligibility, “on the question of whether the ordered combination of elements in the claims amount to an inventive concept, there appear to be material disputes of fact.” Therefore, “a factfinder should really weigh in on this eligibility issue.”

Editorial Comment

As we have noted in several recent posts, courts sometimes welcome the opportunity to defer questions of patent-eligibility. That seems to be what happened here. And interestingly, the court here did not really discuss the Federal Circuit’s decision in Berkheimer v. HP, Inc., 881 F. 3d 1360 (Fed. Cir. 2018), or acknowledge that a claim’s “inventive concept” was a question of fact only as subsidiary to the legal question of subject matter eligibility.