MERE AUTOMATION OF MANUAL PROCESSES USING GENERIC COMPUTERS DOES NOT CONSTITUTE A PATENTABLE IMPROVEMENT IN COMPUTER TECHNOLOGY
| December 6, 2022
International Business Machines Corporation v. Zillow Group, Inc., Zillow, Inc.
Decided: October 17, 2022
Hughes (author), Reyna, and Stoll (dissenting in parts)
Summary:
In 2019, IBM sued Zillow for infringement of several patents related to graphical display technology in the U.S. District Court for the Western District of Washington. Zillow filed a motion for judgment on the pleadings, arguing that the claims of IBM’s asserted patents were patent ineligible under § 101. The district court granted Zillow’s motion as to two IBM patents because they were directed to abstract ideas with no inventive concept. The Federal Circuit agreed with the district court decision and therefore, affirmed.
Details:
Two asserted IBM patents are U.S. Patent Nos. 9,158,789 (“the ’789 patent”) and 7,187,389 (“the ’389 patent”).
The ’789 patent
This patent describes a method for “coordinated geospatial, list-based and filter-based selection.” Here, 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.
Claim 8 is a representative claim:
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.
The ’389 patent
This patent describes methods of displaying layered data on a spatially oriented display based on nonspatial display attributes (i.e., displaying objects in visually distinct layers). Here, objects in layers of interest could be emphasized while other layers could be deemphasized.
Claim 1 is a representative claim:
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.
Federal Circuit
The Federal Circuit reviewed the grant of a Rule 12 motion under the law of the regional circuit (de novo for the Ninth Circuit).
As for Alice step one analysis of the ’789 patent, the Federal Circuit held that the claims fail to recite any inventive technology for improving computers as tools, and instead directed to “an abstract idea for which computers are invoked merely as a tool.”
The Federal Circuit further held that identifying, analyzing, and presenting any data to a user is not an improvement specific to computer technology, and that mere automation of manual processes using generic computers is not a patentable improvement in computer technology.
The Federal Circuit held that this patent describes functions (presenting, receiving, selecting, synchronizing) without explaining how to accomplish these functions.
As for Alice step two analysis of the ’789 patent, the Federal Circuit noted that IBM has not made any allegations that any features of the claims is inventive. Instead, the Federal Circuit held that the limitations in this patent simply describe the abstract method without providing more.
As for Alice step one analysis of the ’389 patent, the Federal Circuit agreed with the district court that this patent is directed to the abstract idea of organizing and displaying visual information (merely organize and arrange sets of visual information into layers and present the layers on a generic display device).
The Federal Circuit held that like the ’789 patent, this patent describes various functions without explaining how to accomplish any of them.
The Federal Circuit further held that the problem this patent tries to solve is not even specific to a computing environment, and the solution that this patent provides could be accomplished using colored pencils and translucent paper.
As for Alice step two analysis of the ’389 patent, the Federal Circuit noted that dynamic re-layering or rematching could also be done by hand (slowly), and that any of the patent’s improved efficiency does not come from an improvement in the computer but from applying the claimed abstract idea to a computer display.
Therefore, the Federal Circuit held that there is no inventive concept that transforms the abstract idea of organizing and displaying visual information into a patent-eligible application of that abstract idea.
Dissent by Stoll
Judge Stoll agreed with the majority opinion. However, she did not agree with the majority opinion that claims 9 and 13 of the ’389 patent are not patent eligible.
The information handling system as described in claim 8 further comprising:
a rearranging request received from a user;
rearranging logic to rearrange the displayed layers, the rearranging logic including:
re-matching logic to re-match one or more objects to a different layer from the plurality of layers;
application logic to apply the non-spatially distinguishable display attributes corresponding to the different layer to the one or more re-matched objects; and
display logic to display the one or more rematched objects.
She noted that in combination with factual allegations in the complaint (problems with the conventional technology with larger and complex data systems) and the expert declaration, the claimed relaying and rematching steps are directed to a technical improvement in how a user interacts with a computer with the GUI.
Takeaway:
- The argument that the claimed invention improves a user’s experience while using a generic computer is not sufficient to render the claims patent eligible at Alice step one analysis.
- Identifying, analyzing, and presenting certain data to a user is not an improvement specific to computing technology itself (mere automation of manual processes using generic computers not sufficient).
- The specification should be drafted to explain how to accomplish the required functions instead of merely describing them (avoid “result-based functional language”).
Tags: 35 U.S.C. §101 > Alice > patent eligible subject matter > patent ineligible subject matter
