Claims of US patent 6,826,620 in the name of Network Congestion Solutions LLC was found to be patent eligible subject matter under 35 USC 101 because the claims are directed to a solution for a problem that arises in the computer context.
- In reviewing post-Alice cases such as DDR and Intellectual Ventures, the court is struck by the evolution of the § 101 jurisprudence, from the complete rejection of patentability for computer programs to the almost complete acceptance of such, to the current (apparent) requirements that the patent claims in suit (1) disclose a problem “necessarily rooted in computer technology,” and (2) claim a solution that (a) not only departs from the “routine and conventional” use of the technology, but (b) is sufficiently specific so as to negate the risk of pre-emption. See DDR, 773 F.3d at 1257; Intellectual Ventures, 792 F.3d at 1371.
Broad description of the invention
The ‘6,826,620 patent claims methods and systems that alleviate congestion in a communication network.
Claim 1 recites:
A method for alleviating congestion in a communication network, the communication network enabling the flow of data to and from a plurality of end user devices that are connected to the network through a plurality of communication devices, the method comprising the steps of:
monitoring data flows to and from the plurality of end user devices for indications of congestion; and
controlling the data rate of at least one end user device in response to said congestion indications.
(12:29-37) Claim 6 recites
A system for alleviating congestion in a communication network, the communication network enabling the flow of data to and from a plurality of end user devices that are connected to the network through a plurality of communication devices, comprising:
means for monitoring data flows to and from the plurality of end user devices for indications of congestion; and
means for controlling the data rate of at least one end user device in response to said congestion indications.
(12:52-60) Claim 13 is directed to a computer program. (13:13-23)
Section 101 provides that patentable subject matter extends to four broad categories, including: “new and useful processes], machinefs], manufacture, or composition[s] of matter.” 35 U.S.C. § 101; see also Bilski v. Kappos, 561 U.S. 593, 601 (2010) (“Bilski II”); Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980). A “process” is statutorily defined as a “process, art or method, and includes a new use of a known process, machine manufacture, composition of matter, or material.” 35 U.S.C. § 100(b).
The Supreme Court has explained:
A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.
Diamond v. Diehr, 450 U.S. 175, 182-83 (1981) (internal quotations omitted).
The Supreme Court recognizes three “fundamental principle” exceptions to the Patent Act’s subject matter eligibility requirements: “laws of nature, physical phenomena, and abstract ideas.” Bilski II, 561 U.S. at 601. In this regard, the Court has held that “[t]he concepts covered by these exceptions are `part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none.'” Bilski II, 561 U.S. at 602 (quoting Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948)). “[T]he concern that drives this exclusionary principle is one of pre-emption,” that is, `”that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, ___ U.S. ___, 134 S.Ct. 2347, 2354 (2014) (citing Bilski II, 561 U.S. at 611-12 and Mayo Collaborative Servs.v. Prometheus Labs., Inc., 566 U.S. ___, 132 S.Ct. 1289, 1301 (2012)).
Although a fundamental principle cannot be patented, the Supreme Court has held that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection,” so long as that application would not preempt substantially all uses of the fundamental principle. Bilski II, 561 U.S. at 611 (quoting Diehr, 450 U.S. at 187) (internal quotations omitted); In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (“Bilski I”). The Court has described the framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us?” To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. We have described step two of this analysis as a 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.”
“[T]o transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words `apply it.'” Mayo, 132 S.Ct. at 1294 (citing Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972)) (emphasis omitted). It is insufficient to add steps which “consist of wellunderstood, routine, conventional activity,” if such steps, “when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” Mayo, 132 S. Ct. at 1298. “Purely `conventional or obvious’ `[pre]-solution activity’ is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.” Id. (citations omitted). Also, the “prohibition against patenting abstract ideas `cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding `insignificant post-solution activity.'” Bilski II, 561 U.S. at 610-11 (citation omitted). For instance, the “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 134 S.Ct. at 2358. “Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of `additional featurfe]’ that provides any `practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.'” Id. (citations omitted).
Because computer software comprises a set of instructions, the first step of Alice is, for the most part, a given; i.e., computer-implemented patents generally involve abstract ideas. The more difficult part of the analysis is subsumed in the second step of the Alice analysis, that is, determining whether the claims “merely recite the performance of some business practice known from the pre-lnternet world along with the requirement to perform it on the Internet,” or whether the claims are directed to “a problem specifically arising in the realm of computer technology” and the claimed solution specifies how computer technology should be manipulated to overcome the problem. DDR Holdings, LLC v. Hotels.Com, LP., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
In DDR, for example, the claims at issue involved computer technology directed at retaining website visitors. In its analysis, the Federal Circuit rejected the notion that the pre-lnternet analog to the claims at issue ended the inquiry, explaining that while the “store within a store” concept. . . may have been well-known by the relevant time frame, that practice did not have to account for the ephemeral nature of an Internet “location” or the near-instantaneous transport between these locations made possible by standard Internet communication protocols, which introduces a problem that does not arise in the “brick and mortar” context.
773 F.3d at 1258. In other words, “[although the claims address[ed] a business challenge . . ., it [was] a challenge particular to the Internet.” Id. at 1257. The Court concluded that, under any of the characterizations of the abstract idea, the claims satisfied step two of Alice as being
different enough in substance from those in Ultramercial because they do not broadly and generically claim “use of the Internet” to perform an abstract business practice (with insignificant added activity). Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result — a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. . . .
In sum, the 399 patent’s claims are unlike the claims in Alice, Ultramercial, buySAFE, Accenture, and Bancorp that were found to be “directed to” little more than an abstract concept. To be sure, the `399 patent’s claims do not recite an invention as technologically complex as an improved, particularized method of digital data compression. But nor do they recite a commonplace business method aimed at processing business information, applying a known business process to the particular technological environment of the Internet, or creating or altering contractual relations using generic computer functions and conventional network operation, such as the claims in Alice, Ultramercial, buySAFE, Accenture, and Bancorp.
Id. at 1258-59 (citing Alice, 134 S.Ct. at 2359; Ultramercial, 772 F.3d 709, 714-16 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013); Bancorp, 687 F.3d at 1277-78); but see Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1331-35 (Fed. Cir. 2012).
In DDR, the analytical framework (in the context of computer-implemented inventions) was articulated so as to require that the inventive concept “recite a specific way” to solve a “particular Internet-centric problem,” with the claimed solution being “necessarily rooted in computer technology,” so that the result “is not merely the routine or conventional use of the Internet.” 773 F.3d at 1257, 1259. Since providing that explanation, the Federal Circuit has not preserved the validity of any other computerimplemented invention under § 101. For instance, in Intellectual Ventures, a case that also presented claims directed at websites, the Court explained that, “[a]t step one of the Alice framework, it is often useful to determine the breadth of the claims in order to determine whether the claims extend to cover a `”fundamental. . . practice long prevalent in our system.'” Intellectual Ventures, 792 F.3d at 1369 (citing Alice, 134 S. Ct. at 2356). The Court characterized the claims at issue as relating to “customizing information based on (1) information known about the user and (2) navigation data.” Id. Likening “[t]his sort of information tailoring” to “providing different newspaper inserts based upon the location of the individual,” id., the Court concluded that the first aspect of the inventive concept was an abstract idea. The second aspect of the inventive concept, using “navigation data (i.e., information relating to when the user navigated to the website) to `customize’ the website,” id., the Court again concluded that “[tailoring information based[, e.g.,] on the time of day of viewing is also an abstract, overly broad concept long-practiced in our society.” Id. at 1370.
Turning to the second step of Alice, the Intellectual Ventures Court concluded that the claims at issue presented no inventive concept “that would support patent eligibility.” Id. at 1370. The Federal Circuit explained:
Steps that do nothing more than spell out what it means to “apply it on a computer” cannot confer patentability. . . . Requiring the use of a “software” “brain” “tasked with tailoring information and providing it to the user” provides no additional limitation beyond applying an abstract idea, restricted to the Internet, on a generic computer.
Id. at 1370-71. In distinguishing DDR, the Intellectual Ventures Court offered the following analysis:
The patent at issue in [DDR] dealt with a problem unique to the Internet: Internet users visiting one web site might be interested in viewing products sold on a different web site, but the owners of the first web site did not want to constantly redirect users away from their web site to a different web site. . . . The claimed solution used a series of steps that created a hybrid web page incorporating “look and feel” elements from the host web site with commerce objects from the third-party web site. . . . The patent at issue in DDR provided an Internet-based solution to solve a problem unique to the Internet that (1) did not foreclose other ways of solving the problem, and (2) recited a specific series of steps that resulted in a departure from the routine and conventional sequences of events after the click of a hyperlink advertisement. . . . The patent claims [in Intellectual Ventures] do not address problems unique to the Internet, so DDR has no applicability.
Id. at 1371 (citations omitted).
In reviewing post-Alice cases such as DDR and Intellectual Ventures, the court is struck by the evolution of the § 101 jurisprudence, from the complete rejection of patentability for computer programs to the almost complete acceptance of such, to the current (apparent) requirements that the patent claims in suit (1) disclose a problem “necessarily rooted in computer technology,” and (2) claim a solution that (a) not only departs from the “routine and conventional” use of the technology, but (b) is sufficiently specific so as to negate the risk of pre-emption. See DDR, 773 F.3d at 1257; Intellectual Ventures, 792 F.3d at 1371. In other words, even though most of the patent claims now being challenged under § 101 would have survived such challenges if mounted at the time of issuance, these claims are now in jeopardy under the heightened specificity required by the Federal Circuit post-Alice. Moreover, it is less than clear how a § 101 inquiry that is focused through the lens of specificity can be harmonized with the roles given to other aspects of the patent law (such as enablement under § 112 and non-obviousness under § 103), especially in light of the Federal Circuit’s past characterization of § 101 eligibility as a “coarse” gauge of the suitability of broad subject matter categories for patent protection. Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010). Given the evolving state of the law, the § 101 analysis should be, and is, a difficult exercise. At their broadest, the various decisions of the Federal Circuit would likely ring the death-knell for patent protection of computer-implemented inventions, a result not clearly mandated (at least not yet). On the other hand, to recognize and articulate the requisite degree of specificity — either in the equipment used or the steps claimed — that transforms an abstract idea into patent-eligible subject matter is a challenging task. In trying to sort through the various iterations of the § 101 standard, the court looks to DDR as a benchmark; i.e., the claims (informed by the specification) must describe a problem and solution rooted in computer technology, and the solution must be (1) specific enough to preclude the risk of pre-emption, and (2) innovative enough to “override the routine and conventional” use of the computer. DDR, 773 F.3d at 1258-59. The pre-emption concern is generally amenable to review in the context of a motion to dismiss or for judgment on the pleadings. The second requirement, which may well involve issues of fact relating to the state of the art in the technological environment involved, is more appropriately addressed after discovery in the context of a motion for summary judgment.
The specification explains that:
Most contemporary communication networks, such as frame relay and asynchronous transfer mode (ATM) networks, provide congestion notification mechanisms to the network user at the point of ingress/egress to the network. Unfortunately, the user equipment at the edge of the network, which is typically a router, generally ignores any congestion notifications since this equipment is normally implementing the network layer and has no ability to control the flow of data at the end user session. The result is that when a user session is sending data at a rate higher than the network can handle, congestion builds within the network until the network starts discarding data.
(4:29-37; 5:11-15) Using a priority queuing device at the ingress point of the network allows higher priority traffic to get through during periods of congestion, but is reactive and “under periods of heavy congestion it falls back to merely discarding traffic in order to relieve the congestion.” (5:45-57) The invention describes “a system and method for allowing a device located at the ingress/egress point of a communication network to monitor congestion notifications at the data link layer of the communication network, and proactively rate control the end user session(s) in response thereto.” The communication device at the edge of the network monitors “the data streams coming out of the communication network for congestion notifications,” and “actively rate control[s] the end user application sessions based on such congestion notifications to alleviate the network congestion.” This allows a network to avoid congestion reaching the point where the network has to discard data.” (5:66-6:12)
Applying the analytical framework of Alice, the court first “determine”] whether the claims at issue are directed to one of those patent-ineligible concepts,” namely, laws of nature, natural phenomena, and abstract ideas. 134 S.Ct. at 2354-55. Defendants argue that the patent is directed to the abstract idea of “resource control management, namely managing resource flow by monitoring the usage of a resource, and then controlling that usage based on that monitoring.” (D.I. 23 at 6) Defendants analogize the claims at bar to resource management performed by a human such as a TSA worker at an airport checkpoint or a factory line supervisor of widgets down a production assembly line. (D.I. 23 at 7-8) Defendants also argue that the steps could be performed mentally by a network engineer, who could “control the data rate” of a particular computer by shutting it down or removing it from the network. (D.I. 23 at 9)
The Supreme Court stated in Alice, “[a]t some level, `all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'” Alice, 134 S.Ct. at 2354 (quoting Mayo, 132 S.Ct. at 1293). In the case at bar, claims 1 and 6 are directed to “alleviating congestion in a communication network” and recite steps used to perform the method for a flow of data to and from end user devices connected to a network through communication devices. That defendants are able to come up with a human equivalent of “resource control management” does not render the claims at bar similar to methods that “merely recite the performance of some business practice known from the pre-lnternet world along with the requirement to perform it on the Internet.” DDR, 773 F.3d at 1257. Instead, the claims at bar are more analogous to those in DDR and “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id.
The court turns to step two of the Alice framework. The claims address the problem of “network congestion” in a defined environment, which includes end user devices and communication devices. Although defendants argue that the environment and devices are well known in the prior art and cannot provide an inventive concept, the claim as a whole (the equipment recited and steps claimed) provides the requisite degree of specificity. Moreover, the claims are directed to a solution for a problem that arises in the computer context. This specificity also suffices to alleviate concerns of pre-emption. Alice, 134 S.Ct. at 2354; Mayo, 132 S.Ct. at 1294. Having considered the parties’ arguments, the court declines to dismiss on this record.