Claims directed to an abstract idea without specifying an inventive concept would fail the Step Two of Alice
| December 6, 2017
Two-Way Media Ltd. v. Comcast Cable Communications, LLC
November 1, 2017
Before Lourie, Reyna and Hughes. Opinion by Reyna.
Summary
This is a case appealed from a decision of district court that asserted that the claims of the patent are directed to patent ineligible subject matter under 35 U.S.C. § 101.
United States Court of Appeals for the Federal Circuit (the “Court”) applied Alice’s two-step framework to analyze whether the claim in question is eligible subject matter. In the first step, the Court ruled that the claims are directed to an abstract idea of “gathering and analyzing information of a specified content, then displaying the result.” In the second step, the Court decided that the claims do not have an inventive concept sufficient enough to transform the nature of the claim into a patent eligible application. Therefore, the decision of district court is affirmed.
Chinese Summary
这是一个从地区法院上诉上来的案件，该地区法院判决本案涉及专利的权利要求不符合35 U.S.C. § 101中关于专利适格性的要求规定.
美国联邦巡回上诉法院（下称“法院”）运用了爱丽丝的两步法框架来分析本案涉及的权利要求是否为专利可授权主题。在爱丽丝第一步中，法院裁定，这些要求是针对“收集和分析指定内容的信息，然后显示结果”的抽象思想.而爱丽丝第二步时，法院裁定，这些权利要求没有足够的创造性概念使权利要求转化为符合专利可授权主题要求规定的权利要求。因此，法院肯定了地方法院的判决。
Details
The subject patent 5,778,187 describes “a system for streaming audio/visual data over a communications system like the internet.” The invention is described as “an improved scalable architecture for delivering real-time information.” It also provides for a control mechanism to manage and administrate users. Figure 1 below shows the architecture of the system provided by the patent.
Figure 1
Claim 1 of the patent which is agreed by both parties as the representative claim of the patent recites:
1. A method for transmitting message packets over a communications network comprising the steps of:
converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol,
for each stream, routing such stream to one or more users,
controlling the routing of the stream of packets in response to selection signals received from the users, and
monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.
(emphasis added).
The Court reviewed de novo whether claim 1 contains patent eligible subject matter by applying the two-step frame work. The Court held that claim 1 is directed to an abstract idea and does not contain an “inventive concept” sufficient to “transform the nature of the claim into a patent-eligible application.”
Alice Step One
Although Two-Way Media argued that claim 1 is tied to particular scalable network architecture, the Court ruled that claim 1 only recites conventional computer components to manipulate data in an abstract way.
For example, the Court adopted Two-Way Media’s proposed claim construction. The proposed construction construes “controlling the routing of the stream of packets in response to selection signals received from the users” as “directing a portion of the routing path taken by the stream of packets from one of a designated group of intermediate computers to the user in response to one or more signals from the user selecting the streams.” The Court held that this construction did not indicate how the claim is directed to the particular scalable network architecture. The Court also noted that, the construction did not provide “any parameters for the “signals” purportedly dictating how the information is being routed.”
Overall, the Court held that claim 1 is “directed to the abstract idea of gathering and analyzing information of a specified content, then displaying the result, and not any particular asserted inventive technology for performing those functions.”
Alice Step Two
The Court held that the claim as opposed to something purportedly described in the specification is missing an inventive concept, thus it cannot save the claim in Alice Step Two. The Court agreed with what is found by district court that although the specification described a system architecture as a technological innovation, the claim itself is missing an inventive concept.
For example, the Court noted that claim 1 refers to certain data “complying with the specification of a network communication protocol” and the data being routed in response to one or more signals from a user. However, claim 1 does not contain details of the “rules forming the communication protocol or specifying parameters for the user signals” which preclude their contribution to the inventive concept determination.
Two-Way Media argued that the claim solves technical problems including excessive loads on a source server, network congestion, variation in delivery times etc. However, the Court notes that the claim “only uses generic function language to achieve these purported solutions.”
Two-Way Media also argued that the district court did not include its proffered evidence to the purported technological innovation. Whereas, the Court held that the proffered material is relevant to a novelty and obviousness analysis which is not relevant to eligible subject matter.
Takeaways
- A claim uses functions of gathering and analyzing information of a specified content, then displaying the result will be directed to an abstract idea when there is no any particular asserted inventive technology for performing those functions specified in the claim
- When a claim is directly an abstract idea, it needs to contain details of the inventive concept of the invention in the claim in order to be qualified as a patentable subject matter under 35 U.S.C. § 101
- More particularly, when the technological invention is an improvement of communication system architecture, it would be helpful to contain details of the inventive concept of the invention such as the rules forming the communication protocol used in the system architecture, specifying parameters for the user signals etc.
