The Software IP Report
No Need to Ask Alice: Districts Continue to Invalidate Patent Claims Based on Ineligible Subject Matter
By Charles Bieneman
Categories: Patent Eligibility, Software Patents, The Software IP Report
The patent community is awaiting the U.S. Supreme Court’s decision in Alice Corporation Pty. Ltd. v. CLS Bank International. This decision may or may not clarify standards for determining patent-eligibility under 35 U.S.C. § 101. Meanwhile, district courts continue to consider, and generally agree with, defendants’ arguments that software patents do not recite patentable subject matter, often when such arguments are made at the pleadings stage in Rule 12 motions. Here are three recent cases (two of which are discussed in more detail in prior posts).
Website Display and Financial Business Method Claims Not Patent-Eligible
Intellectual Ventures had sued Capital One on four patents, two of which remained at issue: U.S. Patent No. 7,603,382, entitled “Advanced Internet Interface Providing User Display Access of Customized Webpages” and U.S. Patent No. 8,083,137, entitled “Administration of Financial Accounts.” Capital One contended “that the ‘137 Patent covers simply the abstract idea of basic budgeting,” and that the ’382 patent “cover[ed] the abstract idea of ‘personalizing a website display to reflect a user’s characteristics and navigation history.'” The court agreed with Capital One, and dismissed the case, finding that neither patented claims that satisfied “either prong of the ‘machine-or-transformation’ test nor otherwise contains a ‘patentable process,’ as that term is defined in § 100(b) or as established by the ‘guideposts’ provided by Supreme Court precedents,” including Bilski v. Kappos. Adding insult to IV’s injury, the court found that the ’382 patent was invalid for indefiniteness, because the claim term “interactive interface” was insolubly ambiguous. Intellectual Ventures I LLC v. Capital One Fin. Corp., No. 1:13-cv-00740 (AJT/TRJ) (E.D. Va. April 16, 2014).
Game Management Claims Not Patent-Eligible
Claims of U.S. Patent No. 7,076,445 were directed to “a method by which a game operator can offer additional items to players for purchase mid-game without interrupting play.” The defendants brought a motion for judgment on the pleadings arguing that the ’445 patent claims failed to recite patent-eligible subject matter. Specifically, the defendants argued “that the ‘445 patent embodies the abstract idea of allowing players to purchase additional objects during a game.” The court granted the motion, agreeing that the patent claims preempted this abstract idea. Further, the claims’ recitation of a computer did not survive the machine-or-transformation test, because the claims could have been practiced by a human, and the computer did not impose a meaningful limitation on the claims. Gametek LLC v. Zynga, Inc., No. CV 13-2546 RS (N.D. Cal. April 25, 2014).
Method for Improving the Mechanical and Physical Properties of Manufactured Metal Parts: Some Claims (Could Be) Patent-Eligible
The United States Court of Claims partly granted a motion for summary judgment of invalidity of claims in U.S. Patent No. 7,175,722 direct to “improving the mechanical and physical properties of manufactured metal parts.” The court reviewed well-known Section 101 precedent, including Parker v. Flook (updating alarm limits during a catalytic conversion process not patent-eligible) and Diamond v. Diehr (method for curing rubber that used known algorithm was patent-eligible). The defendant (the US government) contended that the claims amounted to nothing more than reciting a known relationship and then applying it. The court split the baby:
Claims 1 and 11 are directed to the transformation of a structure using a new method that relies on an inventive manipulation of the phenomena represented by the Larson-Miller relationship. They describe a method of concurrent application of two energy processes to solid manufactured parts to obtain a desired physical property of those structures with more efficiency and indicate that a modified Larson-Miller relationship can be used to characterize that process. The court finds that Claims 1 and 11 do more than recite an equation and direct the application of conventional, known activity. Nonetheless, open questions remain regarding whether Claims 1 and 11 satisfy additional requirements under Section 101 and other sections. Claims 7 and 14, however, do not sufficiently distinguish the claimed methods from a straightforward, and unpatentable, calculation and application of the known Larson-Miller relationship.
Hitkansut LLC v. United States, No. 12-303C (Ct. Cl. April 25, 2014).