Docket No. 2017-1463
LOURIE, WALLACH, STOLL
February 1, 2018
Brief summary: DC decision that the ‘989 claims are not patent eligible under § 101 affirmed (e.g., no technical details or explanation of how to implement the abstract idea of using the computer”), and that REAL conceded the invalidity of the ‘576 patent affirmed.
Summary: In “the fourth installment in a decades-long litigation saga between the parties” beginning in 2007, REAL appealed DC grant of SJ because US 5,032,989 relating to a method for searching for real estate properties on a computer invalid for claiming ineligible subject matter (§ 101), finding US 4,870,576 invalid based on the DC’s “analysis of the ‘989 patent and the parties’ representations in a Joint Status Report”, and that REAL waived its claims of divided infringement (not reached here). In reviewing a DC’s grant of SJ, the FC applies the law of the regional circuit (9th) regarding SJ (“all reasonable inferences in favor of the non-moving party…no genuine issue of material fact”). Under the Alice two-step §101 eligibility test, the court first decides “whether the claims at issue are directed to a ‘patent-ineligible concept, namely a law of nature, natural phenomena, or abstract idea’” and, if yes, it “consider[s] the claim elements, both individually and as an ordered combination, to determine whether they contain an ‘inventive concept’ sufficient to ‘transform the nature of the claim’ into a patent-eligible application” (Alice, US 2014; Mayo, US 2012; Int. Ventures, FC 2017; Internet Patents, FC 2015 (“consider the claims ‘in their entirety to ascertain whether their character as a whole is directed to excluded subject matter’”)). Under step one, the FC panel agreed with the DC that the ‘989 patent “is directed to the abstract idea of ‘a method for collecting and organizing information about about available real estate properties and displaying this information on a digital map that can be manipulated by the user”, finding claim 1 to be “aspirational in nature and devoid of any implementation details or technical description that would permit us to conclude that the claim as a whole is directed to something other than the abstract idea identified by the” DC. The FC panel compared these claims to the patent-ineligible claims of Electric Power Group (FC 2016) directed to “general steps of collecting, organizing, and presenting information” (Int. Ventures I, FC 2017 (“claims were, ‘at their core, directed to the abstract idea of collecting, displaying, and manipulating data’”); Content Ext., FC 2014 (claims to “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” not eligible); Affinity Labs, FC 2016 (“simply us[ing] computers to serve a conventional business purpose” ineligible)). It explained that “[w]hile the [‘989] claim limitations provide steps for using [a] computer to perform the search, they contain no technical details or explanation of how to implement the abstract idea of using the computer” (not “an improvement to computer functionality itself” as in Enfish (FC 2017)). And the FC panel’s “analysis uncover[ed] no inventive concept” (Alice step two; Secured Mail, FC 2017). It also concluded “that REAL has conceded the invalidity of the ‘576 patent.” It therefore affirmed the DC decision.