Inventor declaration not related to what is claimed or discussed in the patent would not help the patent to survive from patent eligibility attack in the pleading stage
| March 8, 2024
INTERNATIONAL BUSINESS MACHINES CORPORATION v. ZILLOW GROUP, INC., ZILLOW, INC.
Decided: January 9, 2024
Hughes (author), Prost, and Stoll
Summary:
The Federal Circuit affirmed the district court’s decision holding that the claims of two IBM’s patents are directed to patent ineligible subject matter under §101, and properly granting Zillow’s motion to dismiss under FRCP 12(b)(6).
Details:
IBM appealed a decision from the Western District of Washington, where the district court granted Zillow’s motion to dismiss under FRCP 12(b)(6). The district court held that all patent claims asserted against Zillow by IBM were directed to ineligible subject matter under 35 U.S.C. §101.
At issue in this appeal were IBM’s two patents – U.S. Patent Nos. 6,778,193 and 6,785,676.
The ’193 patent
The ’193 patent is directed to a “graphical user interface for a customer self-service system that performs resource search and selection.”
This patent is directed to improving how search results are displayed to a user by providing three visual workspaces: (1) a user begins by entering their search query into a “Context Selection Workspace”; (2) a user can further specify the details of their search in a “Detail Specification Workspace”; and (3) a user can view the results of their search in a “Results Display Workspace.”
Independent claim 1 is a representative claim:
1. A graphical user interface for a customer self service system that performs resource search and selection comprising:
a first visual workspace comprising entry field enabling entry of a query for a resource and, one or more selectable graphical user context elements, each element representing a context associated with the current user state and having context attributes and attribute values associated therewith;
a second visual workspace for visualizing the set of resources that the customer self service system has determined to match the user’s query, said system indicating a degree of fit of said determined resources with said query;
a third visual workspace for enabling said user to select and modify context attribute values to enable increased specificity and accuracy of a query’s search parameters, said third visual workspace further enabling said user to specify resource selection parameters and relevant resource evaluation criteria utilized by a search mechanism in said system, said degree of fit indication based on said user’s context, and said associated resource selection parameters and relevant resource evaluation criteria; and,
a mechanism enabling said user to navigate among said first, second and third visual workspaces to thereby identify and improve selection logic and response sets fitted to said query.
The ’676 patent
The ’676 patent is directed to enhancing how search results are displayed to users by disclosing a four-step process of annotating resource results obtained in a customer self service system that performs resource search and selection.”
Independent claim 14 is a representative claim:
14. A method for annotating resource results obtained in a customer self service system that performs resource search and selection, said method comprising the steps of:
a) receiving a resource response set of results obtained in response to a current user query;
b) receiving a user context vector associated with said current user query, said user context vector comprising data associating an interaction state with said user and including context that is a function of the user;
c) applying an ordering and annotation function for mapping the user context vector with the resource response set to generate an annotated response set having one or more annotations; and,
d) controlling the presentation of the resource response set to the user according to said annotations, wherein the ordering and annotation function is executed interactively at the time of each user query.
The District Court
Initially, IBM sued Zillow in the Western District of Washington for allegedly infringing five patents. The claims for two patents were dismissed, and Zillow filed a motion to dismiss under FRCP 12(b)(6) for the remaining three patents.
As for the ’676 patent, the district court found that the claims were merely directed to offering a user ‘the most beneficial and meaningful way’ to view the results of a query… and not advancing computer capabilities per se.”
The district court noted that four steps could be performed with a pen and paper, and that the claims were merely result-oriented.
Therefore, the district court found the asserted claims of the ’676 patent ineligible under §101.
As for the ’193 patent, the district court found that the claims were directed to the abstract idea of “more precisely tailoring the outcome of a query by guiding users (via icons, pull-down menus, dialogue boxes, and the like) to make choices about specific context variables, rather than requiring them to formulate and enter detailed search criteria.”
The district court did not find user context icons, separate workstations, and iterative navigation to be inventive concepts and held that they were well-understood, routine, or conventional at the time of the invention.
Therefore, the district court similarly found the asserted claims of the ’193 patent ineligible under §101.
The CAFC
The CAFC reviewed de novo.
As for the ’193 patent, the CAFC agreed with the district court that the claims do nothing more than improving a user’s experience while using a computer application.
Here, the CAFC noted that IBM failed to explain how the claims do anything more than identify, analyze, and present certain data to a user and that the claims did not disclose any technical improvement to how computer applications are used.
Furthermore, the CAFC agreed with the district court that IBM’s allegations of inventiveness “do[] not . . . concern the computer’s or graphical user interface’s capability or functionality, [but] relate[] merely to the user’s experience and satisfaction with the search process and results.”
Finally, the CAFC noted that the inventor declaration (“one of the key innovative aspects of the invention of the ’193 patent was not just the multiple visual workspaces alone, but how these various visual workspaces build upon each other and interact with each other,” as well as “the use of one visual workspace to affect the others in a closed-loop feedback system.”) did not cite the patent at all, and that neither the claims nor the specification include any such information. Therefore, the CAFC held that simply including allegations of inventiveness in a complaint with the inventor declaration did not make the complaint survive at the pleading stage.
Accordingly, the CAFC affirmed the district court’s decision holding that the ’193 patent is directed to ineligible subject matter under §101 and granting Zillow’s motion to dismiss as to the ’193 patent.
As for the ’676 patent, the CAFC agreed with the district court that the claims are directed to an abstract idea of displaying and organizing information because the representative claims use results-oriented language without mentioning any specific mechanism to perform the claimed steps.
In addition, the CAFC agreed with the district court that IBM failed to plausibly allege any inventive concept that would render the abstract claims patent-eligible.
IBM argued that the district court erred by failing to consider a supposed claim construction dispute regarding the term “user context vector”.
However, the CAFC noted that Zillow adapted IBM’s construction and did not propose an alternate construction. Therefore, the CAFC found that there was no claim construction dispute for the district court to resolve.
Accordingly, the CAFC affirmed the district court’s decision holding that the ’676 patent claimed ineligible subject matter under §101 and granting Zillow’s motion to dismiss as to the ’676 patent.
Dissenting opinion by Stoll
Stoll would vacate the district court’s holding of ineligibility of the claims of the ’676 patent because the majority, like the district court, did not meaningfully address IBM’s proposed construction of “user context vector.”
Takeaway:
- Conclusionary allegations of inventiveness in the inventor declaration would not help the patent to survive from patent eligibility attack in the pleading stage.
- The inventor declaration should be closely tied to the claims and the specification to help the patent to survive from patent eligibility attack.
Tags: 35 U.S.C. § 101 > declaration > Motion to Dismiss > patent eligible subject matter
Quality and Quantity of Specification Support in Determining Patent Eligibility
| March 19, 2021
Simio, LLC v Flexsim Software Products, Inc.
December 29, 2020
Prost, Clevenger, and Stoll
Summary:
In upholding a district court’s finding of patent ineligibility for a computer-based system for object-oriented simulation, the Federal Circuit uses a new “quality and quantity” assessment of the specification’s description of an asserted claim limitation that supposedly supports the claim being directed to an improvement in computer functionality (and not an abstract idea). Here, numerous portions of the specification emphasized an improvement for a user to build object-oriented models for simulation using graphics, without the need to do any programming. This supported the court’s finding that the character of the claim as a whole is directed to an abstract idea – of using graphics instead of programming to create object-oriented simulation models. In contrast to the numerous specification descriptions supporting the abstract idea focus of the patent, one claimed feature that Simio asserted as reflecting an improvement in computer functionality was merely described in just one instance in the specification. This “disparity in both quality and quantity” between the specification support of the abstract idea versus the specification support for the asserted claim feature does not change the claim as a whole as being directed to the abstract idea.
Procedural History:
Simio, LLC sued FlexSim Software Products, Inc. for infringing U.S. Patent No. 8,156,468 (the ‘468 patent). FlexSim moved for judgment on the pleadings under Rule 12(b)(6) for failing to state a claim upon which relief could be granted because the claims of the ‘468 patent are patent ineligible under 35 USC § 101. The district court granted that motion and dismissed the case. The Federal Circuit affirmed.
Background:
Representative claim 1 of the ‘417 patent follows:
A computer-based system for developing simulation models on a physical computing device, the system comprising:
one or more graphical processes;
one or more base objects created from the one or more graphical processes,
wherein a new object is created from a base object of the one or more base objects by a user by assigning the one or more graphical processes to the base object of the one or more base objects;
wherein the new object is implemented in a 3-tier structure comprising:
an object definition, wherein the object definition includes a behavior,
one or more object instances related to the object definition, and
one or more object realizations related to the one or more object instances;
wherein the behavior of the object definition is shared by the one or more object instances and the one or more object realizations; and
an executable process to add a new behavior directly to an object instance of the one or more object instances without changing the object definition and the added new behavior is executed only for that one instance of the object.
Computer-based simulations can be event-oriented, process-oriented, or object-oriented. Earlier object-oriented simulation platforms used programming-based tools that were “largely shunned by practitioners as too complex” according to the ‘468 patent. Use of graphics emerged in the 1980s and 1990s to simplify building simulations, via the advent of Microsoft Windows, better GUIs, and new graphically based tools. Along this graphics trend, the ‘468 patent focuses on making object-oriented simulation easier for users to build simulations using graphics, without any need to write programming code to create new objects.
Decision:
Under Alice step one’s “directed to” inquiry, the court asks “what the patent asserts to be the focus of the claimed advance over the prior art.” To answer this question, the court focuses on the claim language itself, read in light of the specification.
Here, the preamble relates the claim to “developing simulation models,” and the body of the claim recites “one or more graphical processes,” “one or more base objects created from the one or more graphical processes,” and “wherein a new object is created from a base object … by assigning the one or more graphical processes to the base object…” There is also the last limitation (the “executable-process limitation”). Although other limitations exist, Simio did not rely on them for its eligibility arguments.
The court considered these limitations in view of the specification. The ‘468 patent acknowledged that using graphical processes to simplify simulation building has been done since the 1980s and 1990s. And, the ‘468 patent specification states:
“Objects are built using the concepts of object-orientation. Unlike other object-oriented simulation systems, however, the process of building an object in the present invention is simple and completely graphical. There is no need to write programming code to create new objects.” ‘468 patent, column 8, lines 22-26 (8:22-26).
“Unlike existing object-oriented tools that require programming to implement new objects, Simio™ objects can be created with simple graphical process flows that require no programming.” 4:39-42.
“By making object building a much simpler task that can be done by non-programmers, this invention can bring an improved object-oriented modeling approach to a much broader cross-section of users.” 4:47-50.
“The present invention is designed to make it easy for beginning modelers to build their own intelligent objects … Unlike existing object-based tools, no programming is required to add new objects.” 6:50-53.
“In the present invention, a graphical modeling framework is used to support the construction of simulation models designed around basic object-oriented principles.” 8:60-62.
“In the present invention, this logic is defined graphically … In other tools, this logic is written in programming languages such as C++ or Java.” 9:67-10:3.
Taking the claim limitations, read in light of the specification, the court concludes that the key advance is simply using graphics instead of programming to create object-oriented simulations. “Simply applying the already-widespread practice of using graphics instead of programming to the environment of object-oriented simulations is no more than an abstract idea.” “And where, as here, ‘the abstract idea tracks the claim language and accurately captures what the patent asserts to be the focus of the claimed advance …, characterizing the claim as being directed to an abstract idea is appropriate.’”
Simio argued that claim 1 “improves on the functionality of prior simulation systems through the use of graphical or process modeling flowcharts with no programming code requited.” However, an improvement emphasizing “no programming code required” is an improvement for a user – not an improvement in computer functionality. An improvement in a user’s experience (not having to write programming code) while using a computer application does not transform the claims to be directed to an improvement in computer functionality.
Simio also argued that claim 1 improves a computer’s functionality “by employing a new way of customized simulation modeling with improved processing speed.” However, improved speed or efficiency here is not that of the computer, but rather that of the user’s ability to build or process simulation models faster using graphics instead of programming. In other words, the improved speed or efficiency is not that of computer functionality, but rather, a result of performing the abstract idea with well-known structure (a computer) by a user.
Simio finally argued that the last limitation, the executable-process limitation reflects an improvement to computer functionality. It is with regard to this last argument that the court introduces a new “quality and quantity” assessment of the specification. In particular, the court noted that “this limitation does not, by itself, change the claim’s ‘character as a whole’ from one directed to an abstract idea to one that’s not.” As support of this assessment of the claim’s “character as a whole,” the court cited to at least five instances of the specification emphasizing graphical simulation modeling making model building easier without any programming, in contrast to a single instance of the specification describing the executable process limitation:
Compare, e.g., ’468 patent col. 4 ll. 29–42 (noting that “the present invention makes model building dramatically easier,” as “Simio™ objects” can be created with graphics, requiring no programming), and id. at col. 4 ll. 47–50 (describing “this invention” as one that makes object-building simpler, in that it “can be done by non-programmers”), and id. at col. 6 ll. 50–53 (describing “[t]he present invention” as one requiring no programming to build objects), and id. at col. 8 ll. 23–26 (“Unlike other object-oriented simulation systems, however, the process of building an object in the present invention is simple and completely graphical. There is no need to write programming code to create new objects.”), and id. at col. 8 ll. 60–62 (“In the present invention, a graphical modeling frame-work is used to support the construction of simulation models designed around basic object-oriented principles.”), with col. 15 l. 45–col. 16 l. 6 (describing the executable-process limitation). This disparity—in both quality and quantity—between how the specification treats the abstract idea and how it treats the executable-process limitation suggests that the former remains the claim’s focus.
Even Simio’s own characterization of the executable-process limitation closely aligns with the abstract idea: (a) that the limitation reflects that “a new behavior can be added to one instance of a simulated object without the need for programming” and (b) that the limitation reflects an “executable process that applies the graphical process to the object (i.e., by applying only to the object instance not to the object definition).” Although this is more specific than the general abstract idea of applying graphics to object-oriented simulation, this merely repeats the above-noted focus of the patent on applying graphical processes to objects and without the need for programming. As such, this executable-process limitation does not shift the claim’s focus away from the abstract idea.
At Alice step two, Simio argued that the executable-process limitation provides an inventive concept. However, during oral arguments, Simio conceded that the functionality reflected in the executable-process limitation was conventional or known in object-oriented programming. In particular, implementing the executable process’s functionality through programming was conventional or known. Doing so through graphics does not confer an inventive concept. What Simio relies on is just the abstract idea itself – use of graphics in object-oriented simulation. Reliance on the abstract idea itself cannot supply the inventive concept that renders the invention “significantly more” than that abstract idea.
Even if the use of graphics instead of programming to create object-oriented simulations is new, a claim directed to a new abstract idea is still an abstract idea – lacking any meaningful application of the abstract idea sufficient to constitute an inventive concept to save the claim’s eligibility.
Takeaways:
- This case serves a good reminder of the importance of proper specification drafting to address 101 issues such as these. An “improvement” that can be deemed an abstract idea (e.g., use graphics instead of programming) will not help with patent eligibility. The focus of an “improvement” to support patent eligibility must be technological (e.g., in order to use graphics instead of programming in object-oriented simulation modeling, this new xyz procedure/data structure/component replaces the programming interface previously required…). “Technological” is not to be confused with being “technical” – which could mean just disclosing more details, albeit abstract idea type of details that will not help with patent eligibility. Here, even a “new” abstract idea does not diminish the claim still being “directed to” that abstract idea, nor rise to the level of an inventive concept. Improving user experience is not technological. Improving a user’s speed and efficiency is not technological. Improving computer functionality by increasing its processing speed and efficiency could be sufficiently technological IF the specification explains HOW. Along the lines of Enfish, perhaps new data structures to handle a new interface between graphical input and object definitions may be a technological improvement, again, IF the specification explains HOW (and if that “HOW” is claimed). In my lectures, a Problem-Solution-Link methodology for specification drafting helps to survive patent eligibility. Please contact me if you have specification drafting questions.
- This case also serves as a good reminder to avoid absolute statements such as “the present invention is …” or “the invention is… .” There is caselaw using such statements to limit claim interpretation. Here, it was used to ascertain the focus of the claims for the “directed to” inquiry of Alice step one. The more preferrable approach is the use of more general statements, such as “at least one benefit/advantage/improvement of the new xyz feature is to replace the previous programming interface with a graphical interface to streamline user input into object definitions…”
- This decision’s “quality and quantity” assessment of the specification’s focus on the executable-process limitation provides a new lesson. Whatever is the claim limitation intended to “reflect” an improvement in technology, there should be sufficient specification support for that claim limitation – in quality and quantity – for achieving that technological improvement. Stated differently, the key features of the invention must not only be recited in the claim, but also, be described in the specification to achieve the technological improvement, with an explanation as to why and how.
- This is yet another unfortunate case putting the Federal Circuit’s imprimatur on the flawed standard to find the “the focus of the claimed advance over the prior art” in Alice step one, albeit not as unfortunate as Chamberlain v Techtronic (certiorari denied) or American Axle v Neapco (still pending certiorari). In another lecture, I explain why the “claimed advance” standard is problematic and why it contravenes Supreme Court precedent. Briefly, the claimed advance standard is like the “gist” or “heart” of the invention standard of old that was nixed. In Aro Mfg. Co. v. Convertible Top Replacement Co., the Supreme Court stated that “there is no legally recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the invention in a combination patent.” In §§102 and 103 issues, the Federal Circuit said distilling an invention down to its “gist” or “thrust” disregards the claim “as a whole” requirement. Likewise, stripping the claim of all its known features down to its “claimed advance over the prior art” is also contradictory to the same requirement to consider the claim as a whole under section 101. Moreover, the claimed advance standard contravenes the Supreme Court’s warnings in Diamond v Diehr that “[i]t is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. … [and] [t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possibly patentable subject matter.” Furthermore, the origins of the claimed advance standard have not been vetted. Originally, the focus was on finding a practical application of an abstract idea in the claim. This search for a practical application morphed, without proper legal support, into today’s claimed advance focus in Alice step one. Interestingly enough, since the 2019 PEG, the USPTO has not substantively revised its subject matter eligibility guidelines to incorporate any of the recent “claimed advance” Federal Circuit decisions.
Tags: 35 U.S.C. § 101 > abstract idea > patent eligibility > specification drafting
Motion detection system found to be ineligible patent subject matter
| February 18, 2021
iLife Technologies v. Nintendo
January 13, 2021
Moore, Reyna and Chen. Opinion by Moore.
Summary:
iLife sued Nintendo for infringing its patent to a motion detection system. Claim 1 of the patent recites a motion detection system that evaluates relative movement of a body based on both dynamic and static acceleration, and a processor that determines whether body movement is within environmental tolerance and generates tolerance indica, and then the system transmits the tolerance indica. In granting Nintendo’s motion for JMOL, the district court held that claim 1 of iLife’s patent is directed to patent ineligible subject matter under § 101. The CAFC affirmed the district court stating that claim 1 of the patent is directed to the abstract idea of “gathering, processing, and transmitting information” and no other elements of claim 1 transform the nature of the claim into patent-eligible subject matter.
Details:
The patent at issue in this case is U.S. Patent No. 6,864,796 to a motion detection system owned by iLife. iLife sued Nintendo for infringement of claim 1 of the ‘796 patent. Claim 1 of the ‘796 patent is provided:
1. A system within a communications device capable of evaluating movement of a body relative to an environment, said system comprising:
a sensor, associable with said body, that senses dynamic and static accelerative phenomena of said body, and
a processor, associated with said sensor, that processes said sensed dynamic and static accelerative phenomena as a function of at least one accelerative event characteristic to thereby determine whether said evaluated body movement is within environmental tolerance
wherein said processor generates tolerance indicia in response to said determination; and
wherein said communication device transmits said tolerance indicia.
Nintendo moved for summary judgment arguing that claim 1 is directed to patent ineligible subject matter. The district court declined to decide the eligibility issue on summary judgment and the case proceeded to a jury trial. After a jury verdict in favor of iLife, Nintendo moved for a judgment as a matter of law (JMOL) again arguing patent ineligibility. The district court granted Nintendo’s motion for JMOL holding that claim 1 is directed to ineligible subject matter.
The CAFC followed the two-step test under Alice for determining patent eligibility.
1. Determine whether the claims at issue are directed to a patent-ineligible concept such as laws of nature, natural phenomena, or abstract ideas. If so, proceed to step 2.
2. Examine the elements of each claim both individually and as an ordered combination to determine whether the claim contains an inventive concept sufficient to transform the nature of the claims into a patent-eligible application. If the claim elements involve well-understood, routine and conventional activity they do not constitute an inventive concept.
Under step one, iLife argued that claim 1 is not directed to an abstract idea because claim 1 recites “a physical system that incorporates sensors and improved techniques for using raw sensor data” in attempt to analogize with Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) and Cardio-Net, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020). However, the CAFC distinguished Thales because in Thales, “the claims recited a particular configuration of inertial sensors and a specific choice of reference frame in order to more accurately calculate position and orientation of an object on a moving platform.” The court in Thales held that the claims were directed to an unconventional configuration of sensors.”
The CAFC also distinguished Cardio-Net because the claims in that case were “focused on a specific means or method that improved cardiac monitoring technology, improving the detection of, and allowing more reliable and immediate treatment of atrial fibrillation and atrial flutter.” The CAFC started that claim 1 of the ‘796 patent “is not focused on a specific means or method to improve motion sensor systems, nor is it directed to a specific physical configuration of sensors.” Thus, the CAFC concluded that claim 1 is directed to the abstract idea of “gathering, processing, and transmitting information.”
Under step two, the CAFC stated that “[a]side from the abstract idea, the claim recites only generic computer components, including a sensor, a processor, and a communication device.” The CAFC also reviewed the specification finding that these elements are all generic. iLife attempted to argue that “configuring an acceleration-based sensor and processor to detect and distinguish body movement as a function of both dynamic and static acceleration is an inventive concept.” But the CAFC pointed out that the specification describes that sensors that measure both static and dynamic acceleration were known. The CAFC further stated that “claim 1 does not recite any unconventional means or method for configuring or processing that information to distinguish body movement based on dynamic and static acceleration. Thus, the CAFC concluded that merely sensing and processing static and dynamic acceleration information using generic components “does not transform the nature of claim 1 into patent eligible subject matter.”
Comments
When drafting patent applications, make sure to include specific details for performing particular functions and/or specific configurations. Claims including details about performing functions or about specific configurations will have a better chance to survive step one of the Alice test for patent eligibility. The specification should also include descriptions of why the specific functions or configurations provide improvements over the prior art to be able to show that the claims provide an “inventive concept” under step two of Alice.
CAFC finds broadly claimed computer memory system eligible under first step of Alice.
| September 21, 2017
Visual Memory LLC v Nvidia Corporation
August 15, 2017
Before O’Malley, Hughes and Stoll. Precedential Opinion by Stoll, joined by O’Malley; Dissent by Hughes.
Summary:
Visual Memory sued Nvidia for infringement of USP 5,953,740 (the ‘740 patent). The district court granted Nvidia’s motion to dismiss for failure to state a claim (rule 12(b)(6)) based on patent ineligible subject matter. The CAFC reversed and remanded finding that the computer memory systems claims of the ‘740 satisfied the first step of Alice.
Tags: 35 U.S.C. § 101 > Alice > patent eligible subject matter > patent ineligible subject matter
Claims reciting generic, computer implementation of abstract idea found lacking “inventive concept”
| 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。
Software can make non-abstract improvements to computer technology under 35 USC §101
| June 24, 2016
Enfish, LLC v Microsoft Corp.
May 12, 2016
Precedential Opinion by Hughes, joined by Moore and Taranto.
Summary:
Enfish sued Microsoft for infringement of several patents related to a “self-referential” table for a database. The district court found all claims invalid as ineligible under § 101 on summary judgment. The CAFC reversed the summary judgment based on § 101 by finding that claims drawn to a “self-referential” table for a data base are not directed to an abstract idea under step one of the Alice analysis.
Tags: 35 U.S.C. § 101 > abstract idea > Alice > eligible subject matter > ineligible subject matter
Inventive concept standing alone is not patent eligible
| July 10, 2015
Internet Patents Corp. v. Active Network, Inc.,
June 23, 2015
Before: Newman (Opinion author), Moore and Reyna.
Summary
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.
Tags: 35 U.S.C. § 101 > abstract ideas > inventive concept > patent eligible subject matter > significantly more
The fate of Software inventions related to information processing
| January 28, 2015
Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A. et al.
December 23, 2014
Panel: Chen, Dyk and Taranto. Opinion by Chen.
Summary
The Federal Circuit held that the claims of the asserted patents were invalid as patent-ineligible under 35 U.S.C.S. § 101 because none of asserted claims amounted “to ‘significantly more’ than the abstract idea of extracting and storing data from hard copy documents using generic scanning and processing technology.”
Tags: 35 U.S.C. § 101 > abstract ideas > computer > computer memory > laws of nature > patent eligible subject matter > physical phenomena > scanner > software
Ecommerce Patent found to have patent eligible subject matter under Alice.
| January 27, 2015
DDR Holding, LLC v. Hotels.com, L.P.
December 5, 2014
Panel: Wallach, Mayer, and Chen (Circuit Judges). Precedential Opinion by Chen, Dissenting Opinion by Mayer.
Summary
While not all claims purporting to address Internet-centric challenges are eligible for patent, a claimed solution that is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks constitutes patent eligible subject matter.
Tags: 35 U.S.C. § 101 > patent eligible subject matter > patent ineligible abstract idea
