Docket No. 2014-1506
DYK, REYNA, CHEN
July 6, 2015
Brief Summary: DC decision regarding patent ineligible subject matter affirmed (“simple instruction to apply an abstract idea on a computer” or “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” not enough). Claim construction also affirmed.
Summary: Intellectual Ventures (IV) appealed DC invalidity determinations regarding US Pat. Nos. 8,083,137 and 7,603,382 and claim construction of US Pat. No. 7,260,587. Regarding the ‘137 and ‘382 invalidity determinations, the FC opinion reviews the two-step “Alice” process: 1) determine whether the claims are directed to one of the patent ineligible laws of nature, natural phenomena or abstract ideas; and, 2) ask whether the remaining elements, either in isolation or combination with the non-patent eligible elements, are sufficient to “transform the nature of the claim into a patent-eligible application” (Alice, US 2014). The opinion explains “[a] simple instruction to apply an abstract idea on a computer is not enough” and “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not “provide a sufficient inventive concept” (Bancorp. Servs., FC 2012; CLS Bank, US 2014). The ‘137 claims were determined to be directed to the abstract idea of “tracking financial transaction to determine whether they exceed a pre-set spending limit (i.e., budgeting)” (requiring a “communication medium” was not found to “render the claims any less abstract”) and to “contain no inventive concept” (remaining elements “all generic computer elements” and “the budgeting calculations at issue here are unpatentable because they ‘could still be made using a pencil and paper’ with a simple notification device” (Cybersource, FC 2011)). The tailoring of content based on the viewer’s location or address, or time of day, in the ‘382 patent was found to cover “a fundamental…practice long prevalent in our system” like a “newspaper insert…tailored based on information known about the user” or a TV channel showing a toy commercial at a time when children would likely be watching (abstract idea). IV’s argument that the “dynamic presentation of data” (“real time”) “transforms” the claim into patentable subject matter was rejected because “[t]he claims are not so limited” even though the claim includes a “dynamic limitation” because the specification makes clear that the term includes the presentation of “pre-created advertisement[s]” for certain categories of people (e.g., Generation X’er, older individual). Its arguments regarding the “interactive interface” were similarly rejected (“Steps that do nothing more than spell out what it means to ‘apply it on a computer’ cannot confer patent eligibility.” Alice, US 2014). The opinion also explained that DDR Holdings (FC 2014) differs because the patent at issue in that case “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 sequence of events after the click of a hyperlink advertisement”. Claim construction of the ‘587 patent was affirmed based on “the claim itself”, the specification (consistent and “in no way contradicts the plain meaning of the claim language”), and the prosecution history.