Rob Raheja | July 10, 2015
Internet Patents Corp. v. Active Network, Inc.,
June 23, 2015
Before: Newman (Opinion author), Moore and Reyna.
Claims to a method which allows the use of a conventional web browser Back and Forward button functions without loss of data were not patent eligible under 35 U.S.C. 101 because the inventive concept recited in the claim was not limited to any mechanism and thus remained abstract.
The Federal Circuit affirmed the district court dismissal of IPC’s infringement lawsuit that held that the claims of U.S. Patent No 7,707,505 (“the patent”) are not patent eligible under 35 U.S.C. 101 under the two step test set forth by the Supreme Court in Mayo/Alice Corp.
The patent claims a method which allows the use of a conventional web browser Back and Forward button functions without loss of data.
Claim 1 recites:
“A method of providing an intelligent user interface to an online application comprising the steps of:
furnishing a plurality of icons on a web page displayed to a user of a web browser, wherein each of said icons is a hyperlink to a dynamically generated online application form set, and wherein said web browser comprises Back and Forward navigation functionalities;
displaying said dynamically generated online application form set in response to the activation of said hyperlink, wherein said dynamically generated online application form set comprises a state determined by at least one user input; and
maintaining said state upon the activation of another of said icons, wherein said maintaining allows use of said Back and Forward navigation functionalities without loss of said state.” (Empahsis added).
The step one of the Mayo/Alice test requires the court to first determine whether the claims at issue were drawn to patent-ineligible concepts such as one of laws of nature, natural phenomena, and abstract ideas. If so, then under the step two of the Mayo/Alice test requires the court to “ search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible] concept itself.’”
Applying the two step test, the Federal circuit began “by ascertaining the basic character of the subject matter, and then whether there is an ‘inventive concept’ in a claim drawn to some level of abstraction.” The Federal circuit found that the patent describes “the end result of ‘maintaining the state’” “as the innovation over the prior art, and the essential, ‘most important aspect’” as follows:
The most important aspect of the user interface of the present invention is not that it has tabs or that it enables a certain amount of non-sequential (non-linear) access to the various form sets within a virtual application, but that it maintains data state across all panes.
Based on this, the Federal Circuit agreed with “the district court that the character of the claimed invention is an abstract idea: the idea of retaining information in the navigation of online forms.”
The Federal Circuit also found that the claim was drawn to conventional browser elements and “the end result of ‘maintaining the state.’” Specifically, the Federal Circuit found that the patent referred to the “browser Back and Forward button functionality” as “conventional.” The specification also referred to the Back and Forward functionality as “well-known” and “common,” e.g., “Furthermore, the common convenience of the ‘Back’ and ‘Forward’ buttons (provided in all well-known Internet browsers) generally does not function properly when filling in online forms.” “The specification also states that the use of internet web pages for users to fill out online applications was brought about by ‘[t]he increasing popularity of the Internet and the World Wide Web,’ and describes these online application systems as generating information to the user based on information inputted by the user.”
The Federal Circuit also agreed with the district court that the method of accomplishing inventive concept of “maintaining the state” was not described in the claims:
As the district court observed, claim 1 contains no restriction on how the result is accomplished. The mechanism for maintaining the state is not described, although this is stated to be the essential innovation. The court concluded that the claim is directed to the idea itself—the abstract idea of avoiding loss of data. IPC’s proposed interpretation of “maintaining state” describes the effect or result dissociated from any method by which maintaining the state is accomplished upon the activation of an icon.
Therefore, the Federal circuit affirmed that claim 1 is not directed to patent-eligible subject matter.
How to steps of accomplishing the result of the inventive concept should be detailed in the claims and the specification in hopes of overcoming abstraction rejection.