Claims of US patent 7,603,382 in the name of Intellectual Ventures were found to be patent eligible subject matter under 35 USC 101 because the ‘382 patent describes an idea and solution for customized web page content, instead of working in a “normal, expected manner,” thus, “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”
- Internet-centric challenges that do more than recite a common place business method aimed at processing business information or applying a known business process to particular technological environment may be patent eligible.
Broad description of the invention
The ‘382 patent claims a method and a system for selectively tailoring information delivered to an Internet user depending upon the particular needs of the user.
21. A method comprising:
receiving data from a user profile associated with a user;
in response to a request associated with the user, sending a data stream that is selected based at least in part on the received data from the user profile; and
displaying the data stream via an interactive interface, the interactive interface comprising:
a display depicting portions of a web site visited by the user as a function of web site navigation data; and
a display depicting portions of a web site visited by the user based at least in part on the received data from the user profile.
Whether a claim is drawn to patent-eligible subject matter under 35 U.S.C. § 101 is a threshold inquiry to be determined as a matter of law in establishing the validity of the patent. CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1277 (Fed. Cir. 2013), aff’d, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, ___ U.S. ___, 134 S.Ct. 2347 (2014); In re Bilski, 545 F.3d 943, 950 (Fed. Cir. 2008) (citing In re Comiskey, 499 F.3d 1365, 1371 (Fed. Cir. 2007)) (“Bilski I“). Section 101 provides that patentable subject matter extends to four broad categories, including: “new and useful process[es], machine[s], manufacture, or composition[s] of matter.” 35 U.S.C. § 101; see also Bilski v. Kappas, 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. The Supreme 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. Kato 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, 134 S.Ct. at 2354 (citing Bilski II, 561 U.S. at 611-12 and Mayo Collaborative Services 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 612 (quoting Diehr, 450 U.S. at 187) (internal quotations omitted); Bilski/, 545 F.3d at 954. The Supreme Court recently reiterated 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.”
Alice Corp., 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1294, 1296-98). “[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)). It is insufficient to add steps which “consist of well-understood, routine, conventional activity,” if such steps, “when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” Id. 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 postsolution 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 featur[e]’ that provides any `practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.'” Id. (citations omitted).
The court finds the comparison of Bancorp Servs., LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266 (Fed. Cir. 2012), to SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), instructive. In Bancorp, where the asserted patents disclosed “specific formulae for determining the values required to manage a stable value protected life insurance policy,” the district court granted summary judgment of invalidity under§ 101. Bancorp, 687 F.3d at 1270. Under the machine prong of the machine or transformation test, the district court found that “the specified computer components are no more than objects on which the claimed methods operate, and that the central processor is nothing more than a general purpose computer programmed in an unspecified manner.” Id.at 1273. In affirming the district court’s findings, the Federal Circuit explained that theuse of a computer in an otherwise patent-ineligible process for no more than its most basic function — making calculations or computations — fails to circumvent the prohibition against patenting abstract ideas and mental processes. As we have explained, “[s]imply adding a `computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not. Id. at 1278. Ultimately, the Federal Circuit concluded that “[t]he computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.” Id. at 1278.
In contrast to Bancorp, the Federal Circuit in SiRF found that a GPS receiver was “integral” to the claims at issue and, therefore, the machine or transformation test was satisfied. SiRF, 601 F.3d at 1332. As in Bancorp, the SiRFCourt emphasized that a machine will only “impose a meaningful limit on the scope of a claim [when it plays] a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.” Id. at 1333. After noting how the GPS receiver was specifically involved in each step of the method, the Court concluded that “the use of [the] GPS receiver is essential to the operation of the claimed methods.” Id.
In sum, although it is “clear that computer-based programming constitutes patentable subject matter so long as the basic requirements of [35 U.S.C.] § 101 are met,” AT&T,172 F.3d at 1360, the requirements of § 101 as applied to this area of technology have been a moving target, from the complete rejection of patentability for computer programs to the much broader enunciation of the test in State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), abrogated by In re Bilski, 545 F.3d 943., that is, “a computer-implemented invention was considered patent-eligible so long as it produced a `useful, concrete and tangible result.'” DDR Holdings, LLC v. Hotels.Com, L.P., Civ. No. 2013-1505, 2014 WL 6845152, at *10 (Fed. Cir. Dec. 5, 2014). As instructed by the Federal Circuit in DDR Holdings, the Court’s most recent attempt to bring clarity to this area of the law: (1) “recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible,” id. at *9; (2) “mathematical algorithms, including those executed on a generic computer, are abstract ideas,” id.; (3) “some fundamental economic and conventional business practices are also abstract ideas,” id.; and (4) general use of the Internet “to perform an abstract business practice (with insignificant added activity)” does not pass muster under§ 101, id.at *12. In order for claims addressing “Internet-centric challenges” to be patent eligible, the claims must do more than
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 operations, such as the claims in Alice, Ultramercial, buySAFE, Accenture, and Bancorp. Id. (citing Alice, 134 S.Ct. at 2359; Ultramercial, 2014 WL 5904902, at *5, 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 1278).
The ‘382 patent describes “a system for selectively tailoring information delivered to an Internet user depending upon the particular needs of the user.” (‘382 patent, 1:17-19) The specification explains that the standard Internet use results in a Web page “appear[ing] identical[ly] to each information user,” with “no tailoring of information to each information user.” (Id. at 3:10-12) The system of the patent purports to address “current problems with the Internet” by allowing a user to create “a detailed standard profile … having a tremendous amount of detail and [then] selectivity [use] this profile … with any information provider that accepts the standard format.” (Id. at 1:44; 4:22-26) Multiple profiles may be created. (Id. at 3:50-53, 59-65) The “profile is stored in a computer memory (not shown) and transferred to an information provider … when a [w]eb page is accessed.” (Id. at 4: 10-13) “This system allows the information provider to selectively provide information to the information user without the information user’s knowledge or without irking the information user by telling them they need a password, or they need to be a member.” (Id.at 6:39-43) “[A] company [may] tailor the delivery of information to a specific user,” based on the profile. “The web page manager selects [the] most appropriate data streams for the current information user … depending upon the currently available data streams and the profile of the individual.” (Id. at 6:19-33) This results in “a virtual panoply of information which is placed in a mosaic most pleasing to the information users.” (Id. at 4:30-31) The specification also describes that “[t]he system includes an interactive interface which provides a medium for information users to communicate with information providers.” (Id. at 2:6-9) The four independent claims consist of one system claim and three method claims.
Following the Aliceframework, the parties generally agree that the central idea of the claims is providing a customized web page with content based on the user’s profile and website navigation history. Claims 1, 16, and 21 may be broken down to some or all of the following steps: (1) receiving data from a user profile; (2) storing such data; and (3) using such data to display a web page via an interactive interface where the display contains content based on a user’s navigation data and content based on a user’s personal characteristics. Claim 7 uses “data streams” and consists of: (1) generating data streams (which are matched to a profile) where each data stream is associated with a portion of the web page and stored in memory; and (2) changing the portions of the web page with time. Defendants argue that such an idea is “abstract and non-inventive.”
The Federal Circuit, applying step two of the Alice framework, explained in DDR Holdings that, in order for claims addressing “Internet-centric challenges” to be patent eligible, the claims must do more than “recite a commonplace business method aimed at processing business information [or] applying a known business process to the particular technological environment of the Internet….” 2014 WL 6845152 at *12. Id. at *10, 12. Instead of working in a “normal, expected manner,” the ‘382 patent describes an idea and solution for customized web page content, thus, “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id. at *10, 12. The claims do not preempt all applications of providing customized web pages, as they recite a specific method of customizing web pages based on user data. The court concludes that the ‘382 patent passes muster under the Alice framework and recites patentable subject matter.