The Software IP Report
Image Display Patents Fail Alice Test: Gabara v. Facebook, Inc.
In granting a motion to dismiss for lack of patent-eligible subject matter under 35 U.S.C § 101, a court determined that patents relating to moving a portable unit to view an image of a stationary map and using a portable wireless system to improve the operations of a group communicating electronically are abstract ideas that do not include an inventive concept. Gabara v. Facebook, Inc., No. 9cv9890(DLC) (S.D.N.Y. Sep. 4, 2020)
Plaintiff Gabara alleged that Facebook committed direct, induced, and contributory infringement of the five patents at issue: US Patent Nos. 8,930,131; 8,620,545; 8,836,698; 8,706,400 (the “Image Patents”), and 9,299,348 (the “348 patent”).
The Image Patents
The Image Patents are directed toward moving a portable unit, such as a mobile device, to view an image of a stationary map instead of scrolling on the device to change the view. The court likened this concept to moving a telescope across a sky or a magnifying glass across a map.
The court identified claim 1 of the ‘400 patent to be representative of the Image Patents. Independent claim 1 is reproduced below:
1. A method of moving a portable unit to search for a new location comprising the steps of:
displaying an image on a screen of the portable unit matched and superimposed to a corresponding portion of a background image of a stationary map;
mapping a first point of the display image located in a center of the screen of the portable unit to a corresponding reference point in the background image of the stationary map;
moving the portable unit to display a new portion of the background image of the stationary map on the screen;
identifying a new location in the new portion of the background image;
determining a first vector between the center of the screen of the portable unit and the new location; and
moving the center of the screen of the portable unit to the new location as determined by the first vector.
Applying the two-part Alice test, the court stated that Image Patents presented an abstract idea that fails to contain an inventive concept. In analyzing part one of the Alice test, the court determined the concept described in the patents to be an abstract idea. The court explained that the ‘400 patent description is vague and does not describe technical details of accomplishing the claimed steps. The patent only sets forth a solution in terms of results, not specific technical details to make the patent considered patentable subject matter. In addition, the court states that the Image Patents “do not ‘meet a challenge unique to computer networks” or present “a technological solution to a technological problem.’” Packet Intelligence LLC v. NetScout Sys., Inc., 965 F.3d 1299, 1307 (Fed. Cir. 2020).
In analyzing part two of the Alice test, the court stated that the patents fail to be sufficiently inventive because the patents employ “conventional computer hardware and processes, in an ordinary manner, to achieve the idea at the heart of the invention.” To be inventive, “the Image Patents must do more than recite an abstract idea and its conventional application on a computer.” Since the Image Patents do not go beyond conventional computer functionality, the patents do not meet the Alice test, making their claims unpatentable subject matter.
The ‘348 Patent
The ‘348 patent relates to a “portable wireless system” to “improve the operations of a group” communicating electronically. More specifically, the core features include identifying topics in a conversation, searching those topics on the internet, and generating recall topics from the search.
The court evaluated independent claim 7, which is reproduced below:
7. An intelligent conversation system augmenting, a conversation between two or more individuals comprising:
a determination circuit configured to segregate the conversation into topics and to extract search parameters from the topics, wherein the search parameters are sent to a search engine and search results corresponding to the search parameters are received from the search engine;
a memory configured to store the search results; and
a finite state machine configured to sequence through the search results to generate recall topics.
Again, applying the two-part Alice test, the court stated, based on the description in the ‘348 patent, the computer uses conventional functionality to execute the disclosed invention, i.e., the patent claims recite an abstract idea that is applied with a computer. The ‘348 patent does not disclose an improvement to computer functionality and does not show an improvement to prior art. The court compared the claims of the ‘348 patent to claims deemed abstract in Intellectual Ventures I LLC v. Capital one Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017), stating that claims in Intellectual Ventures, like the ‘348 patent, related to “organizing, displaying, and manipulating data of particular documents” and presenting the data. This meant the ‘348 patent failed part one of Alice.
In part two of the Alice test, the ‘348 patent lacked an inventive concept because the process executed by the computer relates to “retrieving relevant information on the basis of prior topics” that is “an ancient practice of human communication.” The ‘348 patent only lists components of general functionality of a computer but does not describe how the invention actually works. In addition, the ‘348 patent does not provide an improvement to the prior art. There is no inventive concept and the ‘348 patent fails part two of Alice.
Lessons for Practice
To be patent eligible under § 101 and Alice, a patent must describe more than the use of conventional functionality of a computer to execute an abstract idea. Mere application using a computer is not enough to show an improvement to the functionality of a computer to establish patentability.