Claims reciting generic, computer implementation of abstract idea found lacking “inventive concept”

Kumiko Ide | March 13, 2017

Intellectual Ventures I LLC, et al. v. Erie Indemnity Co., et al.

March 7, 2017

Before Prost, Wallach, Chen.  Opinion by Prost.

Summary: 

The CAFC affirmed the district court’s determination that claims of both U.S. Patent No. 6,510,434 (“’434 patent”) and U.S. Patent No. 5,546,002 (“’002 patent”) are patent ineligible under 35 U.S.C. § 101.  Applying the two-part analysis from Alice, the District Court found and the CAFC affirmed the claims of both patents as being abstract ideas lacking in “inventive concept,” concluding that the claims are patent ineligible.  In addition, regarding U.S. Patent No. 6,519,518 (“’518 patent”), the CAFC affirmed that Appellants did not own rights to the patent, and therefore Appellants lacked standing to assert infringement.

連邦巡回裁判所(CAFC)は、特許法第101条に基づき、地裁の米国特許第6,510,434号及び5,546,002号には特許適格性がないという判決を支持した。地裁及びCAFCは、最高裁判決Alice事件の二段階分析(two-part analysis)を適用した上で、特許クレームは、抽象的概念(abstract ideas)であり、発明的概念(inventive concept)がないため、特許適格性がないと判断した。また、米国特許第6,519,518号については、上訴人は、当該特許の特許所有者ではないため、当事者適格がないと判示した。

Details:

Appellants, Intellectual Ventures I LLC and Intellectual Ventures II LLC (collectively, “IV”) appealed from the district court’s (1) dismissal of IV’s infringement claims of the ’581 patent for lack of standing and that the ’581 patent is directed to ineligible subject matter under § 101; (2) determination that the ’434 patent is directed to ineligible subject matter under § 101; and (3) determination that the ’002 patent is directed to ineligible subject matter under § 101.

The ’581 Patent

The district court determined that IV did not own rights to the ’581 patent, and therefore granted Appellee’s motion under 12(b)(1) for lack of standing.  The ’581 patent issued from a continuation patent application of U.S. Patent No. 6,236,983 (“’983 patent”).  After a number of assignments, the rights to the ’581 patent (then, a pending application) was assigned to AllAdvantage.com.  This assignment expressly assigned the ’983 patent and any continuation of that patent to AllAdvantage.com.  AllAdvantage.com then assigned various patents and certain pending applications to Alset.  While this agreement expressly identified the ’983 patent, it did not explicitly list the ’581 patent’s then pending application.  Alset then assigned the ’581 patent to an IV entity.  District Court held that Alset did not convey title to the ’581 patents, because the agreement between AllAdvantage.com and Alset did not include an assignment of rights to the ’581 patent.  The CAFC court affirmed the district court’s Rule 12(b)(1) dismissal for lack of standing, concluding that Alset did not convey title to the ’581 patent, and therefore, IV lacked standing to bring suit on that patent.

Regarding the ’581 patent, the district court also concluded that the ’581 patent is directed to an abstract idea and otherwise lacks an inventive concept such that it is ineligible for patent under § 101.  Because IV lacks standing to assert infringement of the ’581 patent, the CAFC stated that it may not address that patent’s validity under § 101.  The CAFC therefore vacated the district court’s summary judgment order on this issue and remanded with instructions to dismiss all claims based on the ’581 patent.

The ’434 Patent

The district court also dismissed IV’s patent infringement claims relating to the ’434 patent, finding the subject matter patent ineligible under § 101.

In interpreting the statutory provision of § 101, the Supreme Court has held that its broad language is subject to an implicit exception for “laws of nature, natural phenomena, and abstract ideas,” which are not patentable.  Alice Corp. v. CLS Bank Int’l, 132 S. Ct. 2347, 2355 (2014).  In determining whether the exception applies, the Supreme Court has set forth a two-step inquiry: (1) whether the claim is directed to a patent-ineligible concept, i.e., a law of nature, a natural phenomenon, or an abstract idea; and if so, (2) whether the elements of the claim, considered “both individually and ‘as an ordered combination,’” add enough to “‘transform the nature of the claim’ into a patent-eligible application.”  Id. (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc.,  132 S. Ct. 1289, 1297-98 (2012)).

The ’434 Patent concerns methods and apparatuses that use an index of XML tags to locate desired information in a computer database.  The CAFC agreed with the District Court that the invention is drawn to the abstract idea of “creating an index and using that index to search for and retrieve data.”  The claims of the ’434 patent are directed to an abstract concept under Alice, and similar to other patent claims previously found ineligible for reciting similar abstract concepts that merely collect, classify, or otherwise filter data.  IV argued that the claims are drawn to a specific search architecture that improves how computer databases function, much like the claims at issue in Enfish LLC v. Microsoft Corp., 822 F. 3d 1327 (Fed. Cir. 2016).  In support of its argument, IV contended that claims are directed expressly to building an index using XML tags.  However, CAFC did not find IV’s argument persuasive, stating that not all claims recite the XML tags, and invention is not limited to using XML.  Moreover, unlike in Enfish, the claims do not focus on how using the XML tags alters the database in a way that leads to a technological improvement over prior art.

In applying the step two of the Alice analysis, the CAFC evaluated whether there are any “additional features” in the claims that constitute an “inventive concept,” transforming the abstract idea into patentable subject matter.  The CAFC agreed with the district court that the claims lack an “inventive concept,” concluding that the claimed steps simply recite routine steps involving generic computer components and conventional computer data processing activities, to accomplish the well-known concept of creating an index for searching and retrieving data.

The ’002 Patent

Finally, the district court additionally dismissed IV’s patent infringement claims relating to the ’002 patent, finding the subject matter patent ineligible under § 101.

The claims of the ’002 is directed to a “mobile interface” on a user’s device that is capable of accessing the user’s data stored anywhere.  In analyzing the claims under step one of Alice, the district court concluded, and the CAFC agreed, that the invention is drawn to the idea of “remotely accessing user specific information,” and therefore is abstract.  Under step two of the inquiry, the CAFC concluded that the claims recite no “inventive concept”, and found the claims merely recite generic, computer implementation of the abstract idea.  The CAFC therefore concluded that the claims of the ’002 patent are patent-ineligible under § 101.

Takeaway:

  • An abstract idea does not become non-abstract by specifying a particular field of use or technological environment.
  • Implementation of an abstract idea using conventional components and functions do not transform an abstract idea into a patent-eligible invention.
  • How a specification describes a technical problem and how to implement solution to overcome that problem is important. In this instance, unlike in Enfish, the claims did not focus on how usage of the XML tags alters the database in a way that leads to improvement over prior art.  Instead, the focus of the claims remained at a high level on searching a database using an index, an abstract concept.
  • Assignment agreements need to expressly state inventions to be conveyed.

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