Docket No. 2017-2139
PROST, HUGHES, STOLL
April 9, 2018
Brief summary: DC grant of Funai’s motion to dismiss suit against it after finding that Maxon’s patents “claim ineligible subject matter under 35 U.S.C. § 101” affirmed (the “claims merely recite generic computer elements for their basic functions and thus do not transform the claimed abstract idea into eligible subject matter under Alice”).
Summary: Maxon appealed DC grant of Funai’s motion to dismiss suit against it after finding that Maxon’s patents “claim ineligible subject matter under 35 U.S.C. § 101.” The DC found the patents (US 8,989,160; 7,489,671; 7,486,649; and 7,171,194) “teach ‘electronic means of increasing user control over subscription entertainment content’”. Representative claim 8 of the ‘160 patent was described as including the “physical components” of “a computer-readable medium, input/output logic, a processor, and a transceiver” and other representative claims were found to include “similar physical elements”. The FC panel reviewed the DC’s motion to dismiss under regional circuit law (Seventh Circuit) and patent eligibility under § 101 de novo under Alice (a legal determination (buySAFE, FC 2014; Alice, US 2014 (step 1: “whether the claims are directed to an abstract idea”; step 2: “whether the claims contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible concept”)). Further, the FC panel wrote, “[t]he use of ‘wholly generic computer implementation’ cannot ‘transform a patent-ineligible abstract idea into a patent-eligible invention.’” Given Maxon’s concession “that the patents are directed to the abstract idea of ‘decentralized delivery controlled by the owner of a plurality of devices’”, “the only issue before the [DC] was whether the claims ‘do significantly more than simply describe the abstract method’” (Affinity Labs., FC 2016). The FC panel agreed with the DC’s conclusion “that the claims recite only generic computing processes using functional language”, and “merely recite generic computer elements for their basic functions and thus do not transform the claimed abstract idea into eligible subject matter under Alice” (Content Extraction, FC 2014). The FC panel also agreed with the DC “that the ordered combination of the claimed elements is not inventive under Alice step two” (representative claim 8 “describes only the desired result…without describing any inventive way that result is reached”…only teaching “in essence, use of generic computer components for their standard purposes to achieve the result”). Thus, the FC agreed with the DC “that the representative claim does not recite anything beyond the application of routine and convention computer components” (and “[t]he same principles apply to each of the asserted patents in this case”). The DC grant of Funai’s motion to dismiss was therefore affirmed.