Docket No. 2015-1180
NEWMAN, PLAGER, REYNA
November 1, 2016
Brief Summary: DC decision of patent ineligibility reversed because, e.g., the claimed “distributed enhancement was a critical advancement over the prior art…an unconventional technological solution…to a technological problem”.
Summary: Amdocs appealed DC finding that its US 7,631,065; 7,412,510; 6,947,984; and 6,836,797 are not directed to patent eligible subject matter under § 101. This case was appealed once before (“Amdocs I”, FC 2014). The Alice decision (US 2014; Mayo, US 2012 is also considered)) was issued after remand in Amdocs I and this appeal relates to whether the patents are eligible under § 101 in view of Alice. All of the patents descend from Ser. No. 09/442,876 (US 6,418,467). The ‘797 patent is a CIP and the others issued from continuations. The patents relate to networks and systems for storing and accessing information using a “distributed architecture”. The opinion reviewed the Alice/Mayo analysis process: 1) determine whether “the claims at issue are directed to one of [the] patent-inelgible concepts” (laws of nature, natural phenomena, abstract ideas); and, 2) “search for an ‘inventive concept’-i.e., an element or ordered 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’”. This FC opinion explains that the court cannot provide “a single, universal definition of ‘abstract idea’” and instead applies the “classic common law methodology” of deciding by “examin[ing] earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided.” This opinion also characterizes Judge Reyna’s dissent as presenting “a different paradigm for identifying an abstract idea…‘a desired goal (i.e., a ‘result or effect’), absent structural or procedural means for achieving that goal, is an abstract idea’” and “focus[ing] on the difference between ‘means’ and ‘ends’” (the dissent argues “[t]he majority avoids determining whether the asserted claims are directed to an abstract idea, or even identify what the underlying abstract idea is.”) And it explains that while its reference to “means-plus-function” practice is “creative” and “helpful”, that approach “is not now the law, either in statute or in court decision” (pointing to “the Court’s rejection of Samuel Morse’s notorious claim 8, regarding the use of electromagnetism…for overbroad preemption of a natural law, not because it was an ‘abstract idea.’”) The opinion reviewed several cases finding no eligibility (e.g., Digitech, FC 2014; Content Extraction, FC 2014; In re TLI, FC 2016) and others finding patent eligible subject matter (e.g., DDR Holdings, FC 2014 (“ordered combination” of steps “not merely ‘the routine or conventional use of the Internet”); BASCOM, FC 2016 (“ordered combination” of steps “provided the requisite inventive concept”)). “In this case”, the FC panel concluded, “the [‘065] claims are much closer to those in BASCOM and DDR Holdings than those in Content Extraction, and In re TLI” since the “distributed enhancement was a critical advancement over the prior art…this claim entails an unconventional technological solution…to a technological problem” even though “[t]he solution requires arguably generic components” because “these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” The FC panel reached a similar conclusion regarding the ‘510, ‘984 and ‘797 claims. The DC decision of patent ineligibility was therefore reversed.