DC grant of motion to dismiss due to 101 ineligibility affirmed (abstract idea, no “improvement in computer technologies”)

AI Visualize, Inc. v. Nuance Communications, Inc., Mach7 Technologies, Inc.

Docket No. 2022-2109 (https://cafc.uscourts.gov/opinions-orders/22-2109.OPINION.4-4-2024_2296276.pdf)

MOORE, REYNA, HUGHES

April 4, 2024

Brief Summary:  DC grant of motion to dismiss due to 101 ineligibility affirmed.

Summary:   AI appealed DC grant of a motion to dismiss (12(b)(6)) that the claims of its US 8,701,167; 9,106,609; 9,438,667; and 10,930,397 asserted against Nuance are “directed to an abstract idea and failed to provide an inventive step that transformed that abstract idea into a patent-eligible invention” and therefore ineligible under section 101.  The patents related to systems for “advanced visualization of medical scans using a dedicated web portal”.  The claims were categorized into group 1 (“displays the user’s requested virtual view”), group 2 (group 1 “assigned a ‘unique identifiable key’”), and group 3 (not including “the step of initially checking to see whether any frames for the user’s requested virtual view are stored locally”).  After Nuance moved to dismiss AI’s complaint for failure to state a claim, AI filed an amended complaint that Nuance argued was directed to patent-ineligible subject matter.  Under Alice step one (Alice, US 2014), the DC “concluded that all the asserted claims are directed to the abstract idea of ‘retrieving user-requested, remotely stored information’” and “rejected AI Visualize’s arguments that the claims are directed to improvements in computer functionality.”  Under Alice step two, the DC concluded “that no claim limitations transformed the representative claims into a patent-eligible applications of an abstract idea” (e.g., “claimed functionally, at a high level of generality”).  The FC panel reviewed the DC decision de novo under Third Circuit law (Endo, FC 2019; Ballentine, 3d Cir. 2007; Bell Atl., US 2007 (“enough facts to state a claim to relief that is plausible on its face”)).  Eligibility under 101 was reviewed under FC law (Smart Sys., FC 2017; SAP, FC 2018).  Under Alice step one, the FC panel reviewed “the character of the claims as a whole to determine whether they are ‘directed to’ patent-ineligible subject matter” and agreed with the DC (Hawk Tech., FC 2023 (“converting information from one format to another . . . is an abstract idea”); Enfish, FC 2016; Affinity Labs., FC 2016 (“by examining the ‘focus of the claimed advance over the prior art’”); Elec. Power, FC 2016 (“improvement in computer technologies, rather than the mere use of computers”); McRO, FC 2016 (“claims must ‘focus on a specific means or method that improves the relevant technology’”); Free Stream, FC 2021 (“consider[] the claim limitations that are purported to describe the claimed advance over the prior art”)).  The FC panel also agreed with the DC’s finding under Alice step two (e.g., “AI Visualize’s amended complaint also failed to adequately allege an inventive concept in the ordered combination of claim limitations”) (Two-Way, FC 2017; Mayo, US 2012 (“[w]hat else is there in the claims before us?”); BSG Tech, FC 2018 (“claim cannot rest on the patent-ineligible concept alone to transform the invention” or rely on “elements or combinations of claim elements that are routine, conventional, or wellknown transform the claims”)).  The DC decision was therefore affirmed.