Claims of US patents in the name of Content Guard Holdings were found to be patent eligible subject matter under 35 USC 101 because they are directed to method and systems of managing digital rights using specific and non-generic “trusted” devices and systems.
- While the meaning of the claimed feature of a a ‘trusted device’ is somewhat nebulous, it underscores that the subject matter is narrow and limited to devices that maintain physical communications and behavioural integrity, rather then all devices that are capable of receiving content via the internet.
- Subject matter that is narrowly claimed is more likely to be patent eligible.
Broad description of the invention
The patents are generally directed towards systems and methods for controlling the use and distribution of digital works in accordance with usage rights through the use of trusted systems.
Claim 1 of U.S. Patent No. 8,393,007 is: A computer-implemented method of distributing digital content to at least one recipient computing device to be rendered by the at least one recipient computing device in accordance with usage rights information, the method comprising:
determining, by at least one sending computing device, if the at least one recipient computing device is trusted to receive the digital content from the at least one sending computing device;
sending the digital content, by the at least one sending computing device, to the at least one recipient computing device only if the at least one recipient computing device has been determined to be trusted to receive the digital content from the at least one sending computing device; and sending usage rights information indicating how the digital content may be rendered by the at least one recipient computing device, the usage rights information being enforceable by the at least on recipient computing device.
ContentGuard asserted claims from six related patents issued to Mark Stefik: U.S. Patent No. 8,393,007 (“the `007 patent”); U.S. Patent No. 8,370,956 (“the `956 patent”); U.S. Patent No. 7,523,072 (“the `072 patent”); U.S. Patent No. 7,269,576 (“the `576 patent”); andU.S. Patent No. 6,963,859 (“the ‘859 patent”) (collectively, the “Stefik Patents”). ContentGuard also asserted claims from two related patents issued to Mai Nguyen: Claims U.S. Patent No. 7,774,280 (“the 280 patent”); and U.S. Patent No. 8,001,053 (“the `053 patent”) (collectively, the “Nguyen Patents”).
The Stefik Patents are generally directed toward systems and methods for controlling the use and distribution of digital works in accordance with “usage rights” through the use of “trusted” systems. The Court construed “trusted” to require that three types of “integrities”—physical, communication, and behavioral—be maintained. Similarly, the Nguyen Patents are generally directed toward systems and methods for controlling the use and distribution of digital works in accordance with “usage rights”—and more particularly, “meta-rights”—through the use of “trusted” systems.
Defendants contend that the above claims are directed to patent-ineligible subject matter and therefore are invalid under 35 U.S.C. § 101. More specifically, Defendants argue that the Stefik Patents address nothing more than the “abstract idea of enforcing usage rights and restrictions on digital content.” Similarly, Defendants argue that the Nguyen Patents address nothing more than the “abstract idea of enforcing sublicensing rights and restrictions (which the patents name `meta-rights’) on digital content.” (Motion at 28).
35 U.S.C. § 101 provides that:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
In deciding Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) (“Alice”), the Supreme Court addressed a series of cases concerning the patent eligibility of software claims under 35 U.S.C. § 101. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (“Myriad”); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) (“Mayo”); Bilski v. Kappos, 561 U.S. 593, 130 S. Ct. 3218 (2010) (“Bilski”). In Alice, the Court reiterated that the right of inventors to obtain patents, as codified in § 101, “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” 134 S. Ct. at 2354 (citing Myriad, 133 S. Ct. at 2116).
In determining whether to apply this exception under § 101, courts “must distinguish between patents that claim the `buildin[g] block[s]’ of human ingenuity and those that integrate the building blocks into something more, thereby `transform[ing]’ them into a patent-eligible invention.” Alice, 134 S. Ct. at 2354. To make that distinction, courts apply a two-step test originally articulated in Mayo, and reaffirmed in Alice. This test requires the Court to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” e.g., an abstract idea. Id. at 2355. If the challenged claims satisfy this “ineligible concept” step, the court must then “determine whether the additional elements `transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1296-97). In this second, “inventive concept” step, the Court considers the elements of each claim both individually and “as an ordered combination” in order to determine if an element or combination of elements within the claims are “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id.
In order to prevail on a § 101 challenge, the movant must show that the challenged claims first fail the “ineligible concept” step and then fail the “inventive concept” steps of the Alice test. In this case, Defendants contend the Patents-in-Suit fail both steps. For example, Defendants contend claim 1 of the `007 Patent fails the first step of the Alice test because it is directed to an abstract idea and “recites elements of a process that can be, and has been, performed by humans without computers.”
Defendants also argue that claim 1 of the `007 Patent fails the second, “inventive concept” step because “[t]here is no inventive element that renders [it] patentable .”
After consideration of all the evidence and the arguments presented, the Court finds that the Patents-in-Suit are directed toward patent-eligible subject matter. In particular, the Patents in-Suit are not directed toward an abstract idea, at least because they are directed toward patent eligible methods and systems of managing digital rights using specific and non-generic “trusted” devices and systems. See, e.g., (Response at 13 (“This is significant because it underscores that the subject matter of the Trusted Repository Patents is narrow, i.e., limited to devices that maintain physical, communications, and behavioral integrity, rather than all devices that are capable to receive content via the Internet.”)). Further, even arguendo, if the Court found that the patents are simply directed toward the “abstract idea of enforcing usage rights and restrictions on digital content” as Defendants propose, which it does not, the claim limitations, individually and “as an ordered combination,” are sufficient to ensure that the Patents-in-Suit amount to “significantly more” than a patent simply on that abstract idea. See Alice, 134 S. Ct. at 2355. For example, the claims require that the “repository” be a “trusted system” which the Court construed as “maintain[ing] physical, communications, and behavioral integrity in the support of usage rights,” in order to manage digital rights. At the very least, the Patents-in-Suit disclose particular solutions for the problem of “enforcing usage rights and restrictions on digital content” that “(1) [do] not foreclose other ways of solving the problem, and (2) recite a specific series of steps that result in a departure from the routine and conventional” way of managing digital rights. Internet Patents Corp. v. Active Network, Inc., No. 2014-1048, 2015 WL 3852975, at *6 (Fed. Cir. June 23, 2015).