IOENGINE, LLC v INGENICO INC., FEDERAL CIRCUIT 2024

IOENGINE, LLC appealed decisions of the U.S. Patent and Trademark Office Office’s Patent Trial and Appeals Board that found unpatentable certain claims of U.S. Patent Nos. 8,539,047; 9,059,969; and 9,774,703.

The patents relate to a tunneling client access point (TCAP) that is a “highly secure, portable, power efficient storage and data processing device” that, upon plugging in to an access terminal (desktop or laptop computer), may make use of the terminal’s traditional user interface and input/output peripherals while the TCAP provides storage, execution, and/or processing resources.  The TCAP tunnels data through the access terminal by allowing data to be provided through the access terminal’s input/output facilities for the user to observe without the data actually residing on the access terminal.

Claim 1 of the ‘969 patent is representative and recites

1. A portable device configured to communicate with a terminal comprising a processor, an input component, an output component, a network communication interface, and a memory configured to store executable program code, including first program code which, when executed by the terminal processor, is configured to present an interactive user interface on the terminal output component,
and second program code which, when executed by the terminal processor, is configured to provide a communications node on the terminal to facilitate communications to the portable device and to a
communications network node through the terminal network communication interface, the portable device comprising:

  • (a) an external communication interface configured to enable the transmission of communications between the portable device and the terminal;
  • (b) a processor; and
  • (c) a memory having executable program code stored thereon, including:
    (1) third program code which, when executed by the portable device processor, is configured to
    provide a communications node on the portable device to coordinate with the communications node on the terminal and establish a communications link between the portable device and the terminal, and facilitate communications to the terminal and to a communications network node through the terminal network communication interface; and
    (2) fourth program code which is configured to be executed by the portable device processor in response to a communication received by the portable device resulting from user interaction with the interactive user interface; wherein the portable device is configured to facilitate communications through the communication node on the terminal and the terminal network interface to a communications network node.

Appellee Ingenico Inc. (Ingenico) filed three petitions for IPR of the Challenged Patents. The Board issued Final Written Decisions finding certain claims of the Challenged Patents unpatentable. IOENGINE appeals, arguing that the Board incorrectly construed the claim term “interactive user interface,” incorrectly applied the Printed Matter Doctrine. Under the Printed Matter Doctrine, certain “printed matter” is given no patentable weight because it is deemed to fall outside the scope of patentable subject matter.   The doctrine does not allow patent protection for claims that are directed solely to the content of printed information.

IOENGINE contended that the Board erroneously construed the claim term “interactive user interface” to mean “a display containing interface elements with which a user
may interact to result in a computer taking action responsively.” In each of its Patent Owner Responses, IOENGINE requested that the Board construe “interactive user interface” to mean “a display containing interface elements with which a user may interact to result in the terminal taking action responsively by responding to the user.” On appeal, however, IOENGINE proposed a new
claim construction that it never proffered to the Board: “a presentation containing interface elements with which a user may interact to result in the device executing code to present / affect the presentation taking action responsively by modifying what is presented.” In contrast to its position
during the IPRs, IOENGINE argues on appeal that the claims encompass either the terminal or the portable device taking responsive action.

According to the Federal Circuit, IOENGINE forfeited its proposed claim construction by not presenting it to the Board during the IPR.  The lesson to be learned here is to make your arguments early in proceedings, not for the first time in an appeal to the Federal Circuit.

The Federal Circuit then turned to IOENGINE’s argument that the Board erred in applying the printed matter doctrine to determine that a cited reference, U.S. Patent Application Pub. No. 2003/0020813A1 (Iida), anticipates claims 4 and 7 of the ’969 patent and claims 61–62 and 110–11 of the ’703 patent. IOENGINE argued that the Board incorrectly applied the printed matter doctrine to accord no patentable weight to certain claim limitations that recite “encrypted
communications” and “program code.”

The Federal Circuit and its predecessor have long recognized that certain ‘printed matter’ falls outside the scope of patentable subject matter under U.S. patent law. Although “printed matter” historically referred to claim elements involving actual “printed” material, today the doctrine has expanded to include any information claimed for its communicative content, regardless of medium.

The Federal Circuit applies a two-step test to determine whether a limitation should be accorded patentable weight under the printed matter doctrine. First, they determine whether the
limitation in question is directed toward printed matter. A limitation is printed matter only if it claims the content of information. Put another way, printed matter is “matter claimed for what it communicates. Only if the limitation in question is determined to be printed matter do we proceed to the second step, which asks whether the printed matter nevertheless should be given patentable  weight.  Printed matter is given such weight if the claimed informational content has a functional or structural relation to the substrate.

Claims 4 and 7 of the ’969 patent, to which the Board applied the printed matter doctrine, both require the “fourth program code [] when executed by the portable device processor, [to be] configured to cause a communication to be transmitted to the communication network node.” Claim 4 of the ’969 patent recites “wherein the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal.” In other words, claim 4 contemplates the portable device sending a communication to the communication network node, which in turn facilitates
sending encrypted communications to the terminal. The Board determined that the term “‘encrypted communications’ claims only communicative content, i.e. printed matter” because it found “nothing in the claim that requires anything beyond sending and receiving data, even if the
data is in an encrypted form.”  The Board further found that there was “no functional relationship of the encrypted data to the communication carrying it” because nothing in the claims required “the data being used or manipulated” or “any processing of encrypted data beyond the transmission of the same.”  The Board thus concluded that the limitation should be afforded no patentable
weight.

The Federal Circuit disagreed with the Board that the claimed “encrypted communications” constitute printed matter. Printed matter is matter that is claimed for its communicative content—i.e., the content specifically  being communicated. The fact that there is a communication itself is not content; content is what the communication actually says. Nor is the form of a communication,
such as whether the communication is encrypted, considered to be content. Printed matter encompasses what is communicated—the content or information being communicated—rather than the act of a communication itself.

The Federal Circuit previously found that an FDA label providing dosage instructions for using a medical product is printed matter, that a label instructing a patient to take a drug with food is printed matter, that instructions on how to perform a DNA test are printed matter, and that numbers printed on a wristband are printed matter. Unlike those examples, which claim communicative content such as medical instructions or numbers, the encrypted communications here are not being claimed for any content that they are communicating. The Federal Circuit therefore found that the claimed “encrypted communications” do not constitute printed matter.

The lesson here is that encrypted communications escape the printed matter doctrine.  It can be said that this decision narrows the printed matter doctrine by implying that a claim limitation is not printed matter unless it explicitly recites specific informational content.  This holding may make it more difficult for examiners to use the printed matter doctrine.  When obviousness rejections against patent claims rely on the printed matter doctrine, they should be challenged using this case.

USC IP PARTNERSHIP V META , FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)

USC brought suit for infringement against Facebook, Inc. (now Meta Platforms, Inc.), asserting that its “News Feed” feature infringes claims 1–17 of U.S. Patent No. 8,645,300.  The software patent relates to a search engine software method for predicting which webpages to recommend to a web visitor based on inferences of the visitor’s “intent.”  The software patent states that website navigation can be enhanced “by recording a visitor’s intent and recording page rankings that indicate how well the pages of a website match the visitor’s intent.” The software patent further explains that visitor intent can be inferred from historical intent data, the Uniform Resource Locator, the user’s visits, and optional user intent confirmation.  The lower court, the Western District of Texas, granted summary judgment that claims 1–17 are invalid.

Claim 1 was deemed representative and recites:
1. A method for predicting an intent of a visitor to a webpage, the method comprising:

  • receiving into an intent engine at least one input parameter from a web browser displaying the webpage;
  • processing the at least one input parameter in the intent engine to determine at least
    one inferred intent;
  • providing the at least one inferred intent to the web browser to cause the at least one
    inferred intent to be displayed on the webpage;
  • prompting the visitor to confirm the visitor’s intent;
  • receiving a confirmed intent into the intent engine;
  •  processing the confirmed intent in the intent engine to determine at least one recommended webpage that matches the confirmed intent, the at least one recommended webpage selected from a plurality of webpages within a defined namespace;
  • causing the webpage in the web browser to display at least one link to the at least one
    recommended webpage;
  • prompting the visitor to rank the webpage for the inferred intent;
    receiving a rank from the web browser; and
  •  storing a datapoint comprising an identity of the webpage, the inferred intent and the
    received rank.

As is usual when evaluating software patents, the Federal Circuit applied the two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77–80 (2012), and further detailed in Alice v. CLS. At step one, they “determine whether the claims at issue are directed to one of those patent-ineligible concepts” such as an abstract idea.  At step two, they “consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.”

At Alice step one, the district court found that the ’300 patent claims “are directed to the abstract idea of ‘collecting, analyzing and using intent data,’” drawing analogy to the
claims invalidated in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). At Alice step two, the district court found that the patent claims do not “recite any elements, when considered individually or ‘as an ordered combination,’ [that] contain
anything ‘significantly more’ than the abstract idea itself.” 

The district court did not accept USC’s position that the intent engine serves a role that is not conventional, generic, or well-known. The district court held that the intent engine “is a purely functional ‘black box’ implemented using standard cloud platforms from well-known vendors.” The district court described USC’s expert’s testimony as making a “conclusory assertion that the claims present a ‘unique and novel way of delivering webpages to consumers that was not previously demonstrated in the prior art,’” finding that this testimony was not “backed by any concrete facts from the specification or the prior art.”  The district court concluded that the claims are unpatentable. 

The Federal Circuit agreed with the district court that the idea of using computers to predict the intent of visitors is insufficient to render the idea non-abstract.  The Federal Circuit analogized to Univ. of Fla. Rsch. Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed.
Cir. 2019) where it was held that a process of collecting, analyzing, and manipulating data on a computer “is a quintessential ‘do it on a computer’” claim and an ineligible abstract idea). The Federal Circuit stated that the district court correctly found that nothing recited in the patent claims, despite the references to web browsers and webpages, affects the functionality of the computer itself.

Turning to Alice step two, the Federal Circuit stated that district court correctly found that the claims do not contain “significantly more” to remove the claims from generality and abstraction.  The district court also correctly observed that “‘web pages,’ ‘web browsers’ and ‘databases’ . . .were well known in the prior art,” and “[n]othing in the
claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending,
and presenting the desired information.” (quoting Electric Power, 830 F.3d at 1355).

The district court held that other claim elements, including the “intent tool,” “ranking tool,” and “widget,” also “do not provide any inventive concept because [they are] standard web browser functionalit[ies].”  Although USC argued that “the intent ranking formula” in the patent specification provides sufficient substance for the operation of the “intent engine,” the Federal Circuit agreed with the district court that the intent engine is only “a purely functional ‘black box,’” for the claims are not directed to the use of this formula nor do they cover the formula itself, and the specification states that skilled artisans would know
“many standard formulas” that would be effective.

Practice tips:

  1.  If there is no novel hardware, try to find a reason why the software improves operation of the computer itself;
  2. Provide and claim details of how the software operates, not just a high level description of the desired result; and
  3. Don’t suggest or imply that your solution is easy or that alternatives could be easily designed.

TRINITY INFO MEDIA, LLC V. COVALENT, INC., FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)

Trinity Info Media, LLC sued Covalent, Inc. for infringement of U.S. Patent Nos. 9,087,321 and 10,936,685 relating to methods and systems for connecting users based on their answers to polling questions. U.S. Patent No. 9,087,321 teaches that its claimed invention is “directed to a poll-based networking system that connects users based on similarities as determined through poll answering and provides real-time results to the users. The claimed invention of the ’685 patent is “directed to a poll-based networking and ecommerce system that connects users to other users, or products, goods and/or services based on similarities as determined through poll answering and provides real-time results to the users.

Claim 1 of U.S. Patent No. 9,087,321 is representative and recites:

1. A poll-based networking system, comprising:

  • a data processing system having one or
    more processors and a memory, the
    memory being specifically encoded with instructions such that when executed, the instructions cause the one or more processors
    to perform operations of:

    • receiving user information from a user to generate a unique user profile for the user;
    • providing the user a first polling question, the first polling question having a finite set of answers and a unique identification;
    • receiving and storing a selected answer for the first polling question;
    • comparing the selected answer against the selected answers of other users, based on the unique identification, to generate a likelihood of match between the user and each of the other users; and
    • displaying to the user the user profiles of other users that have a likelihood of match within a predetermined threshold.

Claim 2 of U.S. Patent No. 10,936,685 recites:

2. A computer-implemented method for creating a poll-based network, the method comprising an act of causing one or more processors having an associated memory specifically encoded with computer executable instruction means to execute the instruction means to cause the one or more processors to collectively perform operations of:

  • receiving user information from a user to generate a unique user profile for the user;
  • providing the user one or more polling
    questions, the one or more polling questions having a finite set of answers and a unique identification;
  • receiving and storing a selected answer for the one or more polling questions;
  • comparing the selected answer against the selected answers of other users, based on the unique identification, to generate a likelihood of match between the user and each of the other users; 
  • causing to be displayed to the user other users, that have a likelihood of match within a predetermined threshold;
  • wherein one or more of the operations are carried out on a hand-held device; and wherein two or more results based on the likelihood of match are displayed in a list reviewable by swiping from one result to another.

Covalent filed a motion to dismiss Trinity’s complaint, arguing that the asserted claims are invalid under 35 U.S.C. § 101.

The Federal Circuit applied the two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77–80 (2012), and further detailed in Alice v. CLS. At step one, they “determine whether the claims at issue are directed to one of those patent-ineligible concepts” such as an abstract idea.  At step two, they “consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.”

Considering step one, the Federal Circuit states that these independent claims are focused on “collecting information, analyzing it, and displaying certain results,” which places them in the “familiar class of claims ‘directed to’ a patent-ineligible concept.” A human mind could review people’s answers to questions and identify matches based on those answers. The Federal Circuit agreed with the district court that the independent claims of both patents are directed to an abstract idea, matching based on questioning.

The ’685 patent’s requirements that the abstract idea be performed on a “hand-held device” or that matches are “reviewable by swiping” does not alter our conclusion that the focus of the asserted claims remains directed to an abstract idea.

In the context of software-based inventions, Alice/Mayo step one “often turns on whether the claims focus on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool.”

The Federal Circuit next considered and rejected several arguments raised by Trinity as to why its claims are not directed to an abstract idea.

Trinity argued that the district court’s analysis at Alice/Mayo step one failed to appreciate several statements in its complaint demonstrating that the patents included an advance over the prior art, that the prior art did not carry out matching on mobile phone, that the prior art did not employ multiple match servers, and that the prior art did not employ match aggregators. These statements did not change the Federal Circuit’s analysis at Alice/Mayo step one. Even accepting these statements as true, the claims are directed to nothing more than performing the abstract idea of matching on a mobile phone according to the Federal Circuit.

Trinity also argued that humans could not mentally engage in the “same claimed process” because they could not perform “nanosecond comparisons” and aggregate “result values with huge numbers of polls and members,” nor could they select criteria using “servers, storage, identifiers, and/or thresholds.  The Federal Circuit did not accept this argument because the patent claims did not require such nanosecond comparisons or aggregating huge numbers of polls and members.  A practice tip, then, would be if you plan to argue that computers can do certain things that humans can’t, put the advantages in the claims.

Similarly, a human could not communicate over a computer network without the use of a computer, yet the Federal Circuit previously held that claims directed to enabling “communication over a network” were focused on an abstract idea in ChargePoint v Semaconnect.

Trinity compared this case to other decisions where the Federal Circuit found the patented invention to be directed to improvements to the functionality of a computer or network platform itself.  However, Trinity used generic computing terms in the patents.

Trinity further argued that the district court failed to adequately consider comparing a selected answer against other users “based on the unique identification,” which
Trinity asserts was a “non-traditional design” that allowed for “rapid comparison and aggregation of result values even with large numbers of polls and members.” The Federal Circuit disagreed. The use of a unique identifier does not prevent a claim from being directed to an abstract idea.

Trinity also pointed to the use of “match servers” and “a match aggregator” to identify matches. Of the asserted claims, only dependent claim 8 of the ’321 patent requires that processors be configured to perform operations involving a “match aggregator” and
“web server” and storing “answers in a database.” According to the Federal Circuit, these components merely place the abstract idea in the context of a distributed networking system, which in the context of the claimed invention as described in the specification does not change the focus of the asserted claims from an abstract idea. 

Trinity argued that the district court omitted the limitation of generating a likelihood of match “within a predetermined threshold,” without which “there would be
no limit or logic associated with the volume or type of results a user would receive.” The Federal Circuit was not convinced that this limitation changes the focus of the claimed invention to something other than the abstract idea of matching based on questioning. Indeed, this limitation merely reflects the kind of data analysis that the abstract idea of matching necessarily includes (e.g., how many answers should be the same before declaring a match).

In conclusion, the asserted claims are directed to the abstract idea of matching based on questioning at Step One.

At Alice/Mayo step two, we “consider the elements of [the] claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.”  

Trinity argued that the district court failed to consider allegations in its complaint that several features of the asserted claims were not “well-understood, routine
or conventional,” listing features purportedly not present in the prior art. Taken as an ordered combination, Trinity argued that claim 1 of the ’321 patent and claim
2 of the ’685 patent contain an inventive concept because they recite steps performed in a “non-traditional system” that can “rapidly connect multiple users using progressive
polling that compare[s] answers in real time based on their unique identification (ID) (and in the case of the ’685 patent employ swiping).” Trinity also argued that dependent claims 2, 3, 8, and 19 of the ’321 patent contain an inventive concept because they specify matching based on “all polls the user previously answered (based on unique identifications)” and include hardware components, “including a server, a database, a match aggregator and a plurality of match servers.”

However, according to the Federal Circuit, claiming the improved speed or efficiency inherent with applying the abstract idea on a computer is insufficient to render  the claims patent eligible as an improvement to computer functionality. Here, the asserted claims are organized in an expected way—receiving user information, asking that user questions, receiving answers, identifying and displaying a match based on those answers.

The Federal Circuit has “ruled many times” that “invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea.”

The Federal Circuit’s conclusion was made easier by the fact that the ’321 patent teaches the use of “conventional” processors, the use of a “web server computer 804” that can be a “conventional server computer system” inclusive of the “match aggregator and/or match server,” and that “[t]he physical connections of the Internet and the protocols and communication procedures of the Internet are well known to those of skill in the art.”

The Federal Circuit was also not persuaded by Trinity’s argument that certain claims contain an inventive concept because they are performed on a handheld device, use a matching application, or permit review of matches using swiping. Appellant’s Br. 32. Just as a claim is not rendered patent eligible by stating an abstract idea and instructing “apply it on a computer,” a claim is not rendered patent eligible merely because the abstract idea is applied on a handheld device or using a mobile application.

The asserted claims were found to be patent ineligible under § 101.

HANTZ SOFTWARE, LLC, V SAGE INTACCT, INC., FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)

Any ineligibility judgment should apply to only claims asserted in a complaint if held patent-ineligible after a motion to dismiss for failure to state a claim.

Hantz sued Sage alleging that Sage infringed U.S. Patent Nos. 8,055,559 and 8,055,560. Sage moved to dismiss the complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), arguing that the complaint asserted patent-ineligible claims under 35 U.S.C. § 101. The district court concluded that the asserted patents are ineligible under § 101.

Hantz maintained that the district court’s ineligibility judgment extended to all claims of the asserted patents, not just claims 1 and 31–33. According to Hantz, any ineligibility judgment should apply to only claims 1 and 31–33 of the asserted patents because Hantz’s operative complaint asserted infringement of only those claims. The Federal Circuit agreed.

Claim 1 of U.S. Patent No. 8,055,5560 is representative and recites:

1. A computer implemented method for Account Payable (AP) accounting for use within a multi-company accounting system that operates on a computer arrangement and which is accessible by one or more persons defining an interface user, the method comprising:

  • at a processor, recording a multi-company voucher with the multi-company accounting system, the interface user entering financial data into the multi-company accounting system via the computer arrangement including:
    • entering a voucher total money amount; and
    • entering input voucher detail lines, each of the input voucher detail lines having an entered account associated with one of a plurality of companies of a multi-company group and an amount of money, at least two of the input voucher detail lines being associated with two distinct companies of the multi-company group, wherein the distinct companies are affiliated with each other and wherein each uses the multi-company accounting system for tracking money flow and balancing balance sheets for their respective accounting operations;
  • at the processor, automatically adding via the multi-company accounting system at least a pair of multi-company generated balancing lines associated with the multi-company voucher for balancing money owed by each of the distinct companies to define an outstanding balance associated with each of the distinct companies, thereby keeping Accounts Payable for each of the distinct companies in balance;
  • at the processor, creating a payment for paying the multi-company voucher including the interface user entering an amount of the payment into the multi-company accounting system via the computer arrangement; and
  • at the processor, recording the payment with the multi-company accounting system to reduce the outstanding balances for the distinct companies including the multi-company accounting system automatically adding at least a pair of multi-company generated Due To/Due From lines as Due To/Due From entries to balance the money owed between the distinct companies, thereby keeping Accounts Payable for each of the distinct companies in balance.

The Federal Circuit found that this claim was patent-ineligible.

HAWK TECHNOLOGY SYSTEMS, LLC, V CASTLE RETAIL, LLC, FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)

A multi-format digital video product system capable of maintaining full-bandwidth resolution while providing professional quality editing and manipulation of images, which is capable of conserving bandwidth while preserving data is not patent-eligible.

Appellant Hawk Technology Systems, LLC sued Appellee Castle Retail, LLC in the Western District of Tennessee for patent infringement based on Castle Retail’s use of security surveillance video operations in its grocery stores. Castle Retail moved to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim.

Hawk is the owner of U.S. Patent No. 10,499,091 titled “High-Quality, Reduced Data Rate Streaming Video Product and Monitoring System.”  The patent relates to a method of viewing multiple simultaneously displayed and stored video images on a remote viewing device of a video surveillance system that has multiple cameras, a broadband connection, a server 312, and a monitor control system. The signals from the cameras are transmitted as streaming sources at relatively low data rates and variable frame rates via a broadband connection. This results in reduced costs to the user, lower memory storage requirements, and the ability to handle a larger monitoring application (due to bandwidth efficiency).  This configuration uses existing broadband infrastructures and a generic PC-based server. 

Claim 1 is representative and recites:

1. A method of viewing, on a remote viewing device of a video surveillance system, multiple simultaneously displayed and stored video images, comprising the steps of:

  • receiving video images at a personal computer based system from a plurality of video sources, wherein each of the plurality of video sources comprises a camera of the video surveillance system;
  • digitizing any of the images not already in digital form using an analog-to-digital converter;
  • displaying one or more of the digitized images in separate windows on a personal computer based display device, using a first set of temporal and spatial parameters associated with each image in each window;
  • converting one or more of the video source images into a selected video format in a particular resolution, using a second set of temporal and spatial parameters associated with each image;
  • contemporaneously storing at least a subset of the converted images in a storage device in a network environment;
  • providing a communications link to allow an external viewing device to access the storage device;
  • receiving, from a remote viewing device remoted located remotely from the video surveillance system, a request to receive one or more specific streams of the video images;
  • transmitting, either directly from one or more of the plurality of video sources or from the storage device over the communication link to the remote viewing device, and in the selected video format in the particular resolution, the selected video format being a progressive video format which has a frame rate of less than substantially 24 frames per second using a third set of temporal and spatial parameters associated with each image, a version or versions of one or more of the video images to the remote viewing device, wherein the communication link traverses an external broadband connection between the remote computing device and the network environment; and
  • displaying only the one or more requested specific streams of the video images on the remote computing device.

Castle Retail moved to dismiss under Rule 12(b)(6) based on its assertion that the patent was invalid under 35 U.S.C. § 101. It argued that the patent claims failed the two-step analysis set forth in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).  The claims, it asserted, failed Alice step one because they are directed to the “abstract concept” of “collecting, manipulating, displaying, and storing information,”  and failed Alice step two because they provide “conventional components” that “provide no inventive concept.”

The District Court found that even using Hawk’s description of the limitations, it is not clear how the claims do more than take video surveillance and digitize it for display and storage in a conventional computer system.” And it explained that surveillance monitoring has been a part of business practices since video cameras have been available. It also explained that, although Hawk identified the “temporal and spatial parameters” as the inventive concept and argued that “converting the data using” those “parameters” changes the nature of the data, neither the claims nor the specification “explain what those parameters are or how they should be manipulated.” As for Alice step two, the district court explained that the claimed “analog-to-digital converter” and “personal computer based system” “are not technological improvements but rather generic computer elements” and that the “parameters and frame rate, considering how they are defined in the claims and specification, similarly, do not appear to be more than manipulating data (in this case, images) in such a way that has been found to be abstract.  The district oddly held a hearing and considered some evidence prior to deciding the R.12(b)(6) motion even though such motions are supposed to be based on the pleadings.

Section 101 of the Patent Act states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C.§ 101. But § 101 “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).  Of course, all inventions rely on laws of nature to some extent.

With regard to Alice step 1, the Federal Circuit agreed with the District Court that the patent is directed to the abstract idea of video storage and display.  The claims are similar to those that the Federal Circuit has found to be directed to abstract ideas. For example, they held that “encoding and decoding image data and . . . converting formats, including when data is received from one medium and sent along through another, are by themselves abstract ideas.” Adaptive Streaming Inc. v. Netflix, Inc. 836 F. App’x 900, 903 (Fed. Cir. 2020). 

(I would like to take this opportunity to provide you with an important hint in how to argue against Alice rejections.  Attack the first step.  Make sure that the claim is fairly analogized to an existing case finding something abstract.  If the examiner can’t point to a similar situation where a claim was found to be abstract, point this out.  Also be aware that, typically, the examiners will over-generalize.)

Hawk argued that the patent claims are directed not to an abstract idea but to “a solution to a technical problem, specifically a multi-format digital video product system capable of maintaining full-bandwidth resolution while providing professional quality editing and manipulation of images.” According to Hawk, the technical problem is “conserving bandwidth while preserving data” and that this solution is a “specific
implementation,” which can be achieved “by performing special data conversion of the video streams” and by digitizing and converting data to “change the nature of the data.” 

According to the Federal Circuit, Hawk’s arguments fail because the claims themselves do not disclose performing any “special data conversion” or otherwise describe how the alleged goal of “conserving bandwidth while preserving data” is achieved. Nor do the claims (or the specification) explain what the claimed parameters are or how they should be manipulated.  Stated otherwise, the patent claims lack sufficient recitation of how the purported invention improves the functionality of video surveillance systems and are recited at such a level of result-oriented generality that those claims amount to a mere implementation of an abstract idea.

To reduce the risk of Alice problems, Malhotra Law Firm PLLC suggests providing some detail in both the claims and specification, not just claiming the desired result.

Regarding Alice Step 2, Hawk argued that the claims recite an inventive solution—one “that achieves . . . the benefit of transmitting the same digital image to different devices for different and perhaps divergent purposes, while using the same bandwidth,” and that “reference[s] specific tools (such as an analog-to-digital converter, where necessary), specific parameters (such as three different sets of temporal and spatial parameters), and even specific frame rates (such as 24 frames per second).

The parameters were the best argument that Hawk had since Hawk admitted that the hardware recited in the claims was conventional. The Federal Circuit recognized that the claims include “parameters,” but the claims fail to specify precisely what the parameters are and the parameters at most concern abstract data manipulation—image formatting and compression.  

The Federal Circuit did not see anything inventive in the ordered combination of the claim limitations. Merely reciting an abstract idea performed on a set of generic computer components, as the claims do here, would not contain an inventive concept.

Try to disclose and recite detail in the claims if possible.  This may go against your nature if you normally try to obtain the broadest claims possible. If you need help protecting your software, contact Malhotra Law Firm, PLLC.

IN RE CERTAIN POLYCRYSTALLINE DIAMOND COMPACTS AND ARTICLES CONTAINING SAME, INTERNATIONAL TRADE COMMISSION 2022 (SUBJECT MATTER ELIGIBILITY)

The ITC took 35 U.S.C. § 101 to its logical extreme in this case, finding that diamond drill bits with certain physical measures are not patent-eligible.

The U.S. International Trade Commission conducts unfair import investigations that, most often, involve claims regarding intellectual property rights.  US Synthetic Corporation filed an ITC complaint alleging violations based upon the importation into the United States of certain polycrystalline diamond compacts and articles infringing U.S. Patent Nos. 10,507,565, 10,508,502, and 8,616,306; and U.S. Patent Nos. 9,932,274 and 9,315,881.  An Administrative Law Judge found at least one accused product infringes all asserted claims of the Asserted Patents, but that those claims are patent ineligible under 35 U.S.C. § 101 and/or invalid under 35 U.S.C. § 102.

The technology in the patents relates to polycrystalline diamond compacts (“PDCs”), which are compacts made of a polycrystalline diamond (“PCD”) and a substrate. PDCs can be shaped as cylindrical parts.

In one disclosed embodiment, the PDC includes “a superabrasive diamond layer commonly referred to as a diamond table” or “PCD table,” a working surface of the PCD table, and a substrate. The substrate is often made from a cemented hard metal composite, like cobalt-cemented tungsten carbide.  At least a portion of the PCD table includes a plurality of diamond grains defining a plurality of interstitial regions.  The plurality of interstitial regions may be occupied by a metal-solvent catalyst, such as iron, nickel, cobalt, or alloys of any of the foregoing metals.  The plurality of diamond grains may exhibit an average grain size of about 50 μm or less, such as about 30 μm or less or about 20 μm or less.

Conventional PDCs were fabricated by placing the substrate into a cartridge with a volume of diamond particles next to the substrate. This cartridge may be loaded into a press that creates high pressure and high-temperature (“HPHT”) conditions.  The substrate and diamond particles are processed under the HPHT conditions in the presence of a catalyst material (e.g., from the substrate) that causes the diamond particles to bond to one another, creating a PCD table that is bonded to the substrate.

The inventors’ believed that the disclosed embodiments of PCDs sintered at a pressure of “at least about 7.5 GPa” differ from conventional HPHT products because they may promote a high-degree of diamond-to-diamond bonding.

PDCs can be used in drilling tools (e.g., cutting elements, gage trimmers, etc.), machining equipment, bearing apparatuses, wire-drawing machinery, and in other mechanical apparatuses. PDCs have found particular utility in cutters in rotary drill bits. A PDC with higher diamond-to-diamond bonding allows wear parts, such as drill bits, to last longer and perform better in high-abrasion applications, such as earth-boring.

Independent claims 1 of the ’565 patent is representative and reads as follows:

1. A polycrystalline diamond compact, comprising:

  • a polycrystalline diamond table, at least an unleached portion of the polycrystalline diamond table including:
    • a plurality of diamond grains directly bonded together via diamond-to-diamond bonding to define
      interstitial regions, the plurality of diamond grains exhibiting an average grain size of about 50 μm or
      less;
    • a catalyst occupying at least a portion of the interstitial regions;
    • wherein the unleached portion of the polycrystalline diamond table exhibits a coercivity of about 115 Oe or more;
    • wherein the unleached portion of the polycrystalline diamond table exhibits an average electrical conductivity of less than about 1200 S/m; and
    • wherein the unleached portion of the polycrystalline diamond table exhibits a Gratio of at least about
      4.0×10      6; and
  • a substrate bonded to the polycrystalline diamond table.

If you have read any of the other posts in Malhotra Law Firm’s History of Software Patents, you will be well aware that the Supreme Court has set forth a two-step framework for analyzing patent eligibility in Alice Corp. Pty. Ltd. v. CLS Bank Int’l,  First, in Alice Step 1, the Federal Circuit is to determine whether the claims at issue are directed to patent-ineligible concepts such as laws of nature, natural phenomena, and abstract ideas. If so, in Alice Step 2, the Federal Circuit is to examine the elements of each claim, considered both individually and as an ordered combination, for an “inventive concept” sufficient to transform the nature of the claim into a patent eligible application.

The ITC stated that it is clear from the language of the claims that the claims involve an abstract idea—namely, the abstract idea of a PDC that achieves the claimed performance measures (G-Ratio and thermal stability) and has certain measurable side effects (specific magnetic saturation, coercivity, and specific permeability), which, as discussed below, the specifications posit are derived from enhanced diamond-to-diamond bonding in the PCDs.  Gratio and thermal stability are performance measurements (specifically of a PDC’s wear resistance and thermal properties), which the specifications posit may be derived from
stronger diamond-to-diamond bonding.

As for the electrical and magnetic properties of a PCD, the ITC stated that there is no dispute that the presence of cobalt or other metal-solvent catalyst in the PCD is measurable.  However, electrical and magnetic properties are not design choices or manufacturing variables, but are instead indirect measures of the effectiveness of other design choices and manufacturing variables, such as sintering pressure, temperature, metal content, and grain size, none of which,
besides grain size, are recited in the claims. 

There was a dissenting view that the fact that the claimed characteristics of PDCs may be measured makes the claims less abstract for purposes of Alice. However, according to the majority, the Federal Circuit has explained that the patent eligibility inquiry requires that the claim identify how a functional result is achieved by limiting the claim scope to structures specified at some level of concreteness, in the case of a product claim, or to concrete action, in the case of a method claim.”

Alice rejections are thought to only be an issue for software and biotech inventions.  Patent practitioners who practice outside these areas may not seriously consider that Alice issues could become a problem.  They would be well advised to study the logic behind cases like this.  That is true even though one would be forgiven for believing that diamond drill bits or other compositions of matter are too abstract.  Alice rejections are based on an exception to the rule of 35 USC 101:  Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.  However, the exception can swallow the rule if interpreted broadly enough.  The problem with characterizing something as “Abstract” in Alice step 1 is that it inherently requires summarizing a claim or ignoring details in a claim.  Anything can be characterized as abstract if enough limitations in a claim are ignored.  If accused of patent infringement, Alice challenges to validity should always be considered.  This is particularly true with broad claims that recite a desired result without much detail of how to achieve the result.  If you need help protecting your software or coming up with a strategy to defend against a claim of infringement, contact Malhotra Law Firm, PLLC.

WEISNER V GOOGLE LLC, FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)

Though creating digital location histories is not patent eligible, a method of enhancing digital search results may be patent eligible.

Mr. Sholem Weisner, an inventor of U.S. Patent Nos. 10,380,202, 10,642,910, 10,394,905 and 10,642,911 (along with Shmuel Nemanov)—sued Google LLC for patent infringement.

The four patents are related and share a common specification. The specification describes ways to digitally record a person’s physical activities and ways to use this information. Individuals and businesses can sign up for a system so that they can exchange information, for instance a URL or an electronic business card. Then, as individuals go about their day, they may encounter people or businesses that they want recorded in their “leg history,” which records the URLs or business cards along with the time and place of the encounters.  The specification describes a “leg history” as the accumulation of a digital record of a person’s physical presence across time. Individuals record entries in their travel history either by accepting a proposal from another person/business (e.g., by pushing a button), or by unilaterally making an entry (e.g., by taking a snapshot with a digital camera and uploading it to their databank). These methods are illustrated in Figure 3 (showing a user accepting a proposed entry by Macy’s) and Figure 4 (showing a user unilaterally making an entry at “Benson’s” by taking a photograph):  The specification also describes using this collected travel history data to enhance web searching results. For example, the specification describes a method for enhancing search results by using a useful person—someone that has visited a location in common with the searching person. In response to a person’s search, the system cross-references the digital histories of the searching person and the useful person to establish a common visit (e.g., “www.fourseasons.com” in and then gives priority to those search results that are found in the useful person’s travel history (e.g., “www.vegassteakhouse.com”).

Claim 1 of the ’202 patent recites recording physical location histories” of individual members that visit stationary vendor members in a member network.  Claim 1 recites:

1. A method of creating and/or using physical location histories, comprising:

  • maintaining a processing system that is connected to a telecommunications network and configured to provide an account to an individual member and to a stationary vendor member of a member network;
  • providing an application that configures a handheld mobile communication device of each individual member of a member network to, upon instances of a physical encounter between the individual member and the stationary vendor member of a plurality of stationary vendor members of the member network at a physical premises of the stationary vendor member, a location of the physical encounter determined by a positioning system in communication with either the handheld mobile communication device or a communication device of the stationary vendor member, and upon acceptance by the handheld mobile communication device of the individual member of an automatic proposal from the stationary vendor member, transmit a URL of the stationary vendor member and a URL of the individual member to the processing system automatically, thereby generating a location history entry, in at least the account of the individual member, that includes (i) the URL of, and a location of, the stationary vendor member, (ii) a time and date of the physical encounter, and (iii) an identity or the account of the individual member and of the stationary vendor member,
  • the URL of the individual member associated with the individual member before the physical encounter between the individual member
    and the stationary vendor member;
  • the application maintaining a viewable physical encounter history on the handheld mobile communication device that includes URLs from multiple stationary vendor members and is searchable from the handheld mobile communication device (i) by URL of the individual member and of the stationary vendor member, (ii) by geographic location, and (iii) by time of the physical encounter,
  • maintaining, using the processing system, a database of physical encounter histories of members of the member network whose accounts
    received the location history entry that was generated during the physical encounters, the individual member’s account having data transfer privileges that allow the physical encounter history to be accumulated through transmission of location history entries from multiple handheld mobile communication devices of the individual member over time; and
  • wherein the physical encounter history of a particular individual member includes at least one visual timeline of physical encounters of the particular individual member. 

Claim 1 of the ’910 patent is similar. It, too, describes accumulation of physical location histories.”  It likewise recites generic features such as an “application,” “handheld mobile communication device,” “database,” etc. Id. The ’910 patent’s recited method, however, involves “capture by the particular individual member” that is processed “automatically.”

The representative claims of the remaining two patents have a different focus: using physical location histories to improve computerized search results. Claim 1 of the ’911 patent recites:

1. A computer-implemented method of enhancing digital search results for a business in a target geographic area using URLs of location histories, comprising:

  • providing, by at least one processing system in communication with a positioning system, an
    account to (i) an individual member and (ii) a stationary vendor member, of a member     network, the account associated with a URL, the individual member’s account associated with a mobile communication device or multiple mobile communication devices,
  • maintaining a communication link between the mobile communication device and the at least one processing system or the positioning system such that the mobile communication device is configured to accumulate a location history on a database maintained by the at least one processing system from physical encounters by the individual member at multiple stationary vendor members upon the mobile communication device being set to enter instances of a physical encounter between the individual member carrying the mobile communication device and the stationary vendor member at a physical premises of the stationary vendor member, the positioning system determining a location of the individual member at the physical premises;
  • for each individual member having a location history who sends a search query to a search engine of the at least one processing system, the search query targeting a geographic area:
    (1) searching, by the search engine, the database for URLs of stationary vendor members in the location history, the location history also identifying time and geographic place of the physical encounters therein, and
    (2) assigning a priority, by the at least one processing system, in a search result ranking based on an appearance of one of the stationary vendor member URLs in the location history of the individual member, wherein that one of the URLs is of a particular stationary vendor member located in the target geographic area. 

Claim 1 of the ‘905 patent recites:

1. A method of combining enhanced computerized searching for a target business with use of humans as physical encounter links, comprising:

  • maintaining a processing system connected to a telecommunications network;
  • providing an application that allows a handheld mobile communication device of each individual member of a member network, the device in communication with a—positioning system, upon a physical encounter between the individual member and a stationary vendor member of a plurality of stationary vendor
    members of the member network at a physical premises of the stationary vendor member, to
    transmit key data of the stationary vendor member and of the individual member to the processing system automatically as a result of the physical encounter, a location of each individual member’s device determined by the positioning system, the key data being a URL or an identifier associated with the URL;
  • maintaining, using the processing system, a database of physical location histories of members of the member network whose key data was transmitted to the processing system during the physical encounters,
  • determining, by the processing system, a physical location relationship recorded in the database between a searching person who is a member of the member network, a reference individual member of the member network and a first stationary vendor member of the plurality of stationary vendor members, upon the searching person making a search query on a search engine having access to the processing system; and
  • responding to the search query by generating a computerized search result that increases a ranking of the first stationary vendor member based on the physical location relationship wherein the relationship is as follows:
    (a) the reference individual member’s physical location history includes key data of the
    first stationary vendor member; and
    (b) the searching person’s physical location history and the reference individual member’s physical location history each include key data of a second stationary vendor member of the plurality of stationary vendor members,
  • wherein the searching person’s physical location relationship to the first stationary vendor
    member is such that the searching person has a physical location relationship with the second stationary vendor member who has a physical location relationship with the reference individual member who has a physical location relationship with the first stationary vendor member.

Google moved to dismiss Mr. Weisner’s Complaints. Google argued that the asserted patent claims are ineligible under 35 U.S.C. § 101. Google also argued that Mr. Weisner had failed to meet the minimum threshold for plausibly pleading his claim of patent infringement.

If you have read any of the other posts in Malhotra Law Firm’s History of Software Patents, you will be well aware that the Supreme Court has set forth a two-step framework for analyzing patent eligibility in Alice Corp. Pty. Ltd. v. CLS Bank Int’l,  First, in Alice Step 1, the Federal Circuit is to determine whether the claims at issue are directed to patent-ineligible concepts such as laws of nature, natural phenomena, and abstract ideas. If so, in Alice Step 2, the Federal Circuit is to examine the elements of each claim, considered both individually and as an ordered combination, for an “inventive concept” sufficient to transform the nature of the claim into a patent eligible application.

At step one of Alice, the Federal Circuit agreed with the district court that the representative claims2 of these patents are directed to an abstract idea. The district court correctly determined that the patent claims are directed to collecting information on a user’s movements and location history and electronically recording that data.

As the district court correctly observed, humans have consistently kept records of a person’s location and travel in the form of travel logs, diaries, journals, and calendars, which compile information such as time and location. Automation or digitization of a conventional method of organizing human activity like the creation of a travel log on a computer does not bring the claims out of the realm of abstractness. The fact that the claims recite a number of generic elements—including a processing system, an application, and a handheld mobile communication device—does not shift their focus away from the core idea of creating a digital travel log. 

Mr. Weisner argued that the claims are not abstract because they are directed to only capturing the travel history of “members.” According to Mr. Weisner, this improves the “integrity” of the data and avoids an “inundation of information making it useless.” According to the Federal Circuit, these purported technological advantages were nothing more than attorney argument, unlinked to the complaint or the patent claims or specification. Neither the specification nor the complaint addresses this purported technological improvement. Although the claims do recite a “member of the member network” and other “member” limitations, they do not limit the data collection to only members.  Thus, the purported benefit of limiting data accumulation to members is not captured in the claims and, accordingly, does not shift the focus of the claims away from the abstract idea of creating a digital travel log. 

Turning to step two, the Federal Circuit considered the elements of each claim both individually and as an ordered combination to determine whether the claims recite “something more” than the abstract idea to transform the nature of the claim into a patent-eligible application.

According to the Federal Circuit, the district court appropriately determined that the specification describes the components and features listed in the claims generically.

The Federal Circuit agreed with the district court that these claims do not recite significantly more than the abstract idea of digitizing a travel log using conventional components. Mr. Weisner again argued that the claim limitations directed to “members” provide the something more to transform the claims into a patent-eligible invention. However, this argument is not linked to the claims. 

Turning next to the ’905 and ’911 patents, the Federal Circuit determined that the challenged claims of these patents had not been shown to be ineligible at the Rule 12(b)(6) stage (motion to dismiss for failure to state a claim), where the court must accept all well-pleaded factual allegations as true and must construe all reasonable inferences in favor.

At step one, the district court erred by failing to separately analyze these patents. Although the specifications
in all four patents are the same, the claims of the ’905 and ’911 patents are not directed to the same subject matter as the ’202 and ’910 patents. Rather, at step one, the Federal Circuit concluded that the representative claims of the ’905 and ’911 patents are directed to creating and using travel histories to improve computerized search results.

Turning to step two of Alice, the Federal Circuit concluded that Mr. Weisner had plausibly alleged that the ’905 and ’911 patent claims recite a specific implementation of the abstract idea that purports to solve a problem unique to the Internet and that, accordingly, these claims should not have been held ineligible under step two at this stage.

Claim 1 of the ‘905 patent uses a “physical location relationship” with a third-party “reference individual” to increase the priority of search results. Claim 1 describes how the physical relationship is established—the system
searches the physical location histories of both a reference individual and the searching person to determine whether they have visited a common location (“second stationary vendor member”). The system then prioritizes search results that the reference individual has visited.  According to the Federal Circuit, this is more than just the concept of improving a web search using location history—it is a specific implementation of that concept.

Try to disclose and claim improvements to computer operations.  Solving a problem unique to the Internet may be sufficient.  Try to disclose and recite detail in the claims if possible.  This may go against your nature if you normally try to obtain the broadest claims possible. If you need help protecting your software, contact Malhotra Law Firm, PLLC.

INTERNATIONAL BUSINESS MACHINES CORPORATION V ZILLOW GROUP INC, FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)

Functionally recited claims to organizing and displaying visual information are not patent-eligible.

IBM owns U.S. Patent No. 9,158,789 on a software method for coordinated geospatial, list-based and filter-based selection. A user draws a shape on a map to select that area of the map, and the claimed system then filters and displays data limited to that area of the map. It synchronizes which elements are shown as “selected” on the map and its associated list.

Claim 8 is representative and recites:

8. A method for coordinated geospatial and list-based mapping, the
operations comprising:

  • presenting a map display on a display device, wherein the map display comprises elements within a viewing area of the map display, wherein the elements comprise geospatial characteristics, wherein the elements comprise selected and unselected elements;
  • presenting a list display on the display device, wherein the list display comprises a customizable list comprising the elements from the map display;
  • receiving a user input drawing a selection area in the viewing area of the map display, wherein the selection area is a user determined shape, wherein the selection area is smaller than the viewing area of the map display, wherein the viewing area comprises elements that are visible within the map display and are outside the selection area;
  • selecting any unselected elements within the selection area in response to the user input drawing the selection area and deselecting any selected elements outside the selection area in response to the user input drawing the selection area; and
  • synchronizing the map display and the list display to concurrently update the selection and deselection of the elements according to the user input, the selection and deselection occurring on both the map display and the list display.

IBM also owns U.S. Patent No. 7,187,389, which describes methods of displaying layered data on a spatially oriented display (like a map), based on nonspatial display attributes (like visual characteristics—color hues, line patterns, shapes, etc.). Essentially, the ‘389 patent claims a method of displaying objects in visually distinct layers. Objects in layers of interest can be brought to and emphasized at the top of the display while other layers are deemphasized.

Claim 1 is representative and recites:
1. A method of displaying layered data, said method comprising:

  • selecting one or more objects to be displayed in a plurality of layers;
  • identifying a plurality of non-spatially distinguishable display attributes, wherein one or more of the non-spatially distinguishable display attributes corresponds to each of the layers;
  • matching each of the objects to one of the layers;
  • applying the non-spatially distinguishable display attributes corresponding to the layer for each of the matched objects;
  • determining a layer order for the plurality of layers, wherein the layer order determines a display emphasis corresponding to the objects from the plurality of objects in the corresponding layers; and
  • displaying the objects with the applied non-spatially distinguishable display attributes based upon the determination, wherein the objects in a first layer from the plurality of layers are visually distinguished from the objects in the other plurality of layers based upon the non-spatially distinguishable display attributes of the first layer. 

Dependent claim 2 adds method steps for rearranging layers and rematching objects in layers based on a user request.

IBM filed this patent infringement suit against Zillow in 2019, alleging that Zillow infringed seven of IBM’s patents. Zillow filed a motion for judgment on the pleadings, arguing that the claims of four of IBM’s asserted patents were patent ineligible under § 101. The district court granted Zillow’s motion as to both the ‘389 and ‘789 patents, concluding that both were directed to abstract ideas, contain no inventive concept, and fail to recite patentable subject matter. 

If you have read any of the other posts in Malhotra Law Firm’s History of Software Patents, you will be well aware that the Supreme Court has set forth a two-step framework for analyzing patent eligibility in Alice Corp. Pty. Ltd. v. CLS Bank Int’l,  First, in Alice Step 1, the Federal Circuit is to determine whether the claims at issue are directed to patent-ineligible concepts such as laws of nature, natural phenomena, and abstract ideas. If so, in Alice Step 2, the Federal Circuit is to examine the elements of each claim, considered both individually and as an ordered combination, for an “inventive concept” sufficient to transform the nature of the claim into a patent eligible application.

Regarding the ‘789 patent, beginning with Alice step one, the Federal Circuit agreed with the District Court that the claims here fail to recite any assertedly inventive technology for improving computers as tools, and are instead directed to an abstract idea for which computers are invoked merely as a tool. The claims are directed to limiting and coordinating the display of information based on a user selection.

According to the Federal Circuit, identifying, analyzing, and presenting certain data to a user is not an improvement specific to computing.  Merely requiring the selection and manipulation of information—to provide a ‘humanly comprehensible’ amount of information useful for users ․ —by itself does not transform the otherwise abstract processes of information collection and analysis. This is a problem when trying to patent user interface designs.  According to the Federal Circuit, the claims here recite similarly abstract steps: presenting a map, having a user select a portion of that map, and then synchronizing the map and its corresponding list to display a more limited data set to the user. Using a computer to “concurrently update” the map and the list may speed up the process, but “mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.

Furthermore, a claim that merely describes an ‘effect or result dissociated from any method by which it is accomplished’ is usually not directed to patent-eligible subject matter.  The Federal Circuit agreed with the district court that the ‘789 patent is result-oriented, describing required functions (presenting, receiving, selecting, synchronizing), without explaining how to accomplish any of the tasks. It is written in result-based functional language that does not sufficiently describe how to achieve these results in a non-abstract way. The claims and specification do not disclose a technical improvement or otherwise suggest that one was achieved. The Federal Circuit concluded that the ‘789 patent is directed to an ineligible abstract idea.

Turning to Alice step two, the Federal Circuit determined whether the claims do significantly more than simply describe the abstract method and thus transform the abstract idea into patentable subject matter.

When evaluating whether a complaint fails to state a claim (under Federal Rule of Civil Procedure 12(b)(6)), only plausible and specific factual allegations that aspects of the claims are inventive are sufficient.

According to the Federal Circuit, IBM had not made plausible and specific allegations that any aspect of the claims is inventive. The cited “synchronizing” and “user determined shape” limitations use functional language, at a high level of generality and divorced from any computer technology, to recite the claimed functions. The limitations simply describe the abstract method without providing more. Even if they did require the use of a computer, claims toan abstract idea implemented on generic computer components, without providing a specific technical solution beyond simply using generic computer concepts in a conventional way do not suffice at step two.

The Federal Circuit next turned to the ‘389 software patent, beginning with Alice step one.

The Federal Circuit agreed with the district court that the ‘389 patent is directed to the abstract idea of organizing and displaying visual information. They have held that the collection, organization, and display of two sets of information on a generic display device is abstract absent a ‘specific improvement to the way computers [or other technologies] operate. The ‘389 patent’s claims do not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem. Instead, they recite a purportedly new arrangement of generic information that assists users in processing information more quickly. 

Furthermore, like the ‘789 patent, the ‘389 patent describe[s] various operations (selecting, identifying, matching, re-matching, applying, determining, displaying, receiving, and rearranging), without explaining how to accomplish any of the tasks.

Such functional claim language, without more, is insufficient for patentability.

IBM argued that its claimed invention is like a software interface patent that the Federal Circuit held patentable in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., because it is directed to particular or specific implementations of presenting information in electronic devices. Core Wireless involved a patent directed to “improved display interfaces” of electronic devices that “allow a user to more quickly access desired data stored in, and functions of applications included in, the electronic devices,” particularly those with small screens like mobile telephones. The Federal Circuit held that the asserted claims were directed to “an improved user interface for computing devices” that was patentable because it addressed problems specific to navigating applications on small screens, as repeatedly emphasized by the patent’s specification.  The Federal Circuit concluded in that case that the specification’s “language clearly indicates that the claims are directed to an improvement in
the functioning of computers, particularly those with small screens.”  Here, representative claim 1 of the ‘389 patent is much broader than the asserted claims in Core Wireless. It is not limited to computer screens or any device at all. The method it recites (selecting, organizing, and displaying visual information based on non-spatial attributes) has long been done by cartographers creating paper maps.

The problem the ‘389 patent purportedly solves—i.e., that the display of “any system that has large numbers of objects in many categories with relationships is difficult to understand,” ‘is not specific to a computing environment. One could encounter this same occlusion problem when looking at a particularly cluttered paper map. The patent’s solution—to visually present information in a way that aids the user in distinguishing between the various displayed layers,—could be accomplished using colored pencils and translucent paper, as the district court noted.  The Federal Circuit thus concluded that the ‘389 patent is directed to an ineligible abstract idea and proceeded to Alice step two. 

At Alice step two, the ‘389 patent fared no better. The district court concluded that the patent contained no inventive concept because it was not directed to a computer specific problem and merely used well-understood, routine, or conventional technology (a general-purpose computer) to more quickly solve the problem of layering and displaying visual data.

The Federal Circuit saw no inventive concept that transforms the abstract idea of organizing and displaying visual information into a patent-eligible application of that abstract idea.

Interfaces are tricky to patent after Alice.  Design patent application should always be filed for computer graphics interfaces as a large percentage are allowed as filed and as litigation is less costly than for utility patents.  Utility patents are possible if sufficient details are disclosed and claimed or if there is some argument that computer performance is improved.  If you need help protecting your software, contact Malhotra Law Firm, PLLC.

COOPERATIVE ENTERTAINMENT, INC v KOLLECTIVE TECHNOLOGY, INC, FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)

At the pleadings stage, all that is required to survive a motion to dismiss based on Alice are plausible allegations in a complaint that the claims are patent-eligible.

The District Court for the Northern District of California’s dismissed Cooperative’s complaint for failure to state a claim as it found all claims of U.S. Patent No. 9,432,452 patent ineligible under 35 U.S.C. § 101

U.S. Patent No. 9,432,452 is a software patent that relates to structuring a peer-to-peer dynamic network for distributing large files, such as videos and video games. In prior art systems, video streaming was controlled by content distribution networks (CDNs), where content was “distributed directly from the CDN server originating the content.” The patent, in contrast, claims methods and systems for a network in which content distribution occurs “outside controlled networks and/or [CDNs],” i.e., outside a “static network of controlled systems.” It does this with dynamic P2P networks comprising “peer nodes,” i.e., nodes consuming the same content contemporaneously, that transmit content directly to each other instead of receiving content from the CDN.  To facilitate content distribution, the claimed P2P networks use “content segmentation” in which a video file, for example, is segmented into smaller clips and distributed piecemeal. As a result, viewers can obtain individual segments as needed, preferably from other viewers. Content is segmented using several techniques, including “CDN address resolution, trace route to CDN and the P2P server manager, dynamic feedback from peers reporting traffic rates between individual peer and its neighbors, round-robin, other server side scheduling/resource allocation techniques, and combinations thereof.” Claim 1 is representative and recites:

1. A system for virtualized computing peer based content sharing comprising:

  • at least one content delivery server computer constructed and configured for electrical connection and communication via at least one communications network; and
  • at least one peer-to-peer (P2P) dynamic network including a multiplicity of peer nodes, wherein the multiplicity of peer nodes consume the same content within a predetermined time, wherein the multiplicity of peer nodes are constructed and configured for electronic communication over the at least one P2P dynamic network, wherein the at least one P2P dynamic network is based on at least one trace route;  wherein the multiplicity of peer nodes is distributed outside controlled networks and/or content distribution networks (CDNs) that are included within the at least one communications network;
  • wherein the at least one content delivery server computer is operable to store viewer information, check content request, use the trace route to segment requested content, find peers, and return client-block pairs; wherein distribution of P2P content delivery over the at least one P2P dynamic network is based on content segmentation;
  • wherein content segmentation is based on CDN address resolution, trace route to CDN and P2P server manager, dynamic feedback from peers reporting traffic rates between individual peer and its neighbors, round-robin and other server side scheduling/resource allocation techniques.

If you have read any of the other posts in Malhotra Law Firm’s History of Software Patents, you will be well aware that the Supreme Court has set forth a two-step framework for analyzing patent eligibility in Alice Corp. Pty. Ltd.
v. CLS Bank Int’l,  First, in Alice Step 1, the Federal Circuit is to determine whether the claims at issue are directed to patent-ineligible concepts such as laws of nature, natural phenomena, and abstract ideas. If so, in Alice Step 2, the Federal Circuit is to examine the elements of each claim, considered both individually and as an ordered combination, for an “inventive concept” sufficient to transform the nature of the claim into a patent eligible application.

The district court held at Alice step one the “focus of the ’452 patent” is the abstract idea of “the preparation and transmission of content to peers through a computer network.” At Alice step two, the district court characterized the ’452 patent as “merely implement[ing] the abstract idea of preparing and
transmitting data over a computer network with generic computer components using conventional technology.”

According to the Federal Circuit, there are at least two alleged inventive concepts in claim 1 which should have precluded the district court’s holding on ineligibility. The first is the required dynamic P2P network wherein multiple peer nodes consume the same content and are configured to communicate outside the CDNs. The second requires trace routes be used in content segmentation.

The specification explains how claim 1’s dynamic P2P network structure is different from and improves upon the prior art, especially the structural limitation that the peer nodes consuming the same content be distributed outside a controlled network or a CDN. As a result, the invention of claim 1 by-passes any established or static content delivery network (CDN); advantageously, this saves time, improves redundancy, and also reduces or eliminates costs for content delivery over the CDN for the peer nodes.

The systems and methods of the invention provide for harnessing the content recipient devices to aggregate or assemble intelligent functionality of the devices unassociated with the content receipt, including but not limited to computational storage and processing capacity of the content recipient devices in the P2P dynamic network

Drawing all inferences in favor of Cooperative, as the Federal Circuit must do on a motion to dismiss, they concluded that claim 1 recites a specific technical solution that is an inventive concept: it recites a particular arrangement of peer nodes for distributing content “outside controlled networks and/or [CDNs].

Where a defendant tries to have your infringement suit thrown out, all you need are plausible Alice arguments.  At this stage, it is too late to change the patent document.  If you need help protecting your software, contact Malhotra Law Firm, PLLC.

IN RE JASON SMITH, FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)

Mr. Smith’s argued that the first step in analyzing a claim must be to determine whether the claim is useful.  And if it is useful, it is by law patent-eligible.  The Federal Circuit disagreed.

The U.S. Patent and Trademark Office rejected claims of Jason Smith’s patent application as patent ineligible under 35 U.S.C. § 101. The Patent Trial and Appeal Board affirmed the rejection. Mr. Smith appealed to the Federal Circuit.

Mr. Smith’s patent application Serial No. 14/786,244 (Publication No. 2016/0063403) relates to software for asset acquisition and management.

Claim  is representative and recites:

  • A method for facilitating asset acquisition, asset management and asset maintenance whereby customers can purchase from multiple vendors comprising:
  • providing to vendor and customer users access to consortium management software;
    providing and maintaining in said consortium management software relational data base tables which are linked together, including a vendor/customer database table, whereby vendor users and customer users can enter their identifying and personal data, and a searchable product catalogue database table;
  • providing in said searchable product catalogue database for receipt from vendor users, product, product pricing and product maintenance data;
  • providing an inventory database table and a customer asset management database table;
  • providing customer users access to said searchable product catalogue database, whereby a customer searches the catalogue data base and purchases from any vendor user product selected from said product catalogue database;
    providing for association of any said user’s identifying data with information in any database table,
    which information is pertinent only to a particular said identified user with said users identifying
    data;
  • [and] linking the purchasing customer’s identifying information from the customer/vendor database table, and the product, product pricing and product maintenance data for the selected product or products, to one or both of said inventory database table and/or said customer asset management data base table, such that the customer can retrieve, use and manipulate the product, product pricing and product maintenance data in connection with the management of the assets purchased. 

If you have read any of the other posts in Malhotra Law Firm’s History of Software Patents, you will be well aware that the Supreme Court has set forth a two-step framework for analyzing patent eligibility in Alice Corp. Pty. Ltd.
v. CLS Bank Int’l,  First, in Alice Step 1, the Federal Circuit is to determine whether the claims at issue are directed to patent-ineligible concepts such as laws of nature, natural phenomena, and abstract ideas. If so, in Alice Step 2, the Federal Circuit is to examine the elements of each claim, considered both individually and as an ordered combination, for an “inventive concept” sufficient to transform the nature of the claim into a patent eligible application.

The Appeals Board had analyzed claim 1 under the two-step Alice inquiry and determined it was ineligible under § 101. At step one, the Board determined that each of the steps in the claim relate to storing vendor/customer information, product information, and asset management information, associating the various items of information with other items of information, and enabling the retrieval of any information and any of its associated information. It further found that such data organization is akin to collecting data, analyzing the data (e.g., associating and/or linking certain data), and displaying results (e.g., the requested data and any linked or associated data), which the Federal Circuit in earlier similar cases found patent ineligible at step one of Alice. At step two, the Board determined that “to the extent claim 1 includes
additional elements, any such additional elements include only conventional computer components” and that these elements, when considered individually and as an ordered combination, are well-understood, routine, conventional
activity in the field and are not specified beyond a high level of generality.

The Federal Circuit saw no error in the Appeals Board’s analysis.  The Federal Circuit has routinely held that claims that are directed to collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner are claims to abstract ideas. The Federal Circuit reached such a conclusion in cases such as In re Killian; Electric Power Group, LLC v. Alstom S.A.; Intellectual Ventures I LLC v. Capital One Financial Corp.; and In re TLI Communications LLC Patent Litigation. Regarding Alice step two, the Federal Circuit stated that nothing in the claim recites an inventive concept to transform the abstract idea into a patent-eligible application. The claim recites generic computer functions, which the specification describes are carried out by conventional computer components and can be implemented using existing technologies.

Mr. Smith’s argued that the first step in analyzing a claim to a new process or an improvement thereof must be to determine whether it is useful and that if it is useful, it is by law patent eligible.  It is an interesting argument and Professor Michael Risch, in his paper A Surprisingly Useful Requirement has suggested such an approach.  Unfortunately for Mr. Smith, the courts have never adopted that kind of test.  I would personally recommend focusing on just obviousness.  If a claim has a high level of generality, it may well be possible to reject it on obviousness grounds.  But the Federal Circuit has not asked me for my opinion.

There are two lessons here.  Where possible, try to describe and claim how the software improves computer performance.  If no such arguments can be thought up, describe and claim software processes in detail, beyond a high level of generality. If you need help protecting your software, contact Malhotra Law Firm, PLLC.