Docket No. 2018-1234 (Non-precedential)
O’MALLEY, CLEVENGER, REYNA
July 16, 2018
Brief summary: DC holding that Mr. Burnett’s claims are invalid for being directed to ineligible subject matter (§ 101) affirmed.
Summary: Mr. Burnett appealed DC holding claims 1 and 9 of US 7,107,286 invalid as directed to ineligible subject matter (§ 101) and dismissal of his amended complaint for failure to state a claim upon which relief can be granted (Rule 12(b)(6)). The claims are directed to “[a] geospatial media recorder” and “[a] geospatial information processing method”, which the DC found to be “directed to a patent-ineligible mathematical methodology ‘for converting geographic coordinates into alphanumeric representations” lacking “any additional features…such as limitations directed to using a computer to implement the mathematical methodology” that “transform the nature of claims into patent-eligible concepts.” The FC panel explained that “patent eligibility can be determined at the Rule 12(b)(6) stage” (Aatrix, FC 2018) and “that ‘[l]aws of nature, natural phenomena, and abstract ideas’ are exceptions to § 101” (Alice, US 2014; Mayo, US 2012; Gottschalk, US 2012 (“These exceptions render ineligible, for example, mathematical formulas.”)) Under the two-step test under Alice, the court first determines “whether a claim is directed to a law of nature, a natural phenomenon, or an abstract idea” and then considers whether the elements of the claim “both individually and ‘as an ordered combination’…‘transform the nature of the claim’ into a patent-eligible application” (Alice, Mayo). The FC panel agreed with the DC that “the claims at issue are directed to an abstract idea” (applying “a mathematical methodology to convert geospatial coordinates into a single string of natural numbers”). Mr. Burnett argued the claim term “concatenating” should be defined as beginning with a “programming process” that “is not a mathematical methodology, but rather a ‘data programming process’”. The FC panel found that this would not change the result since it has “held that a process that starts with data, applied an algorithm, and ends with a new form of data is directed to an abstract idea” (Digitech Image, FC 2014). The FC panel also explained that the Alice step two analysis is performed to “provide practical assurance that the [claims are] more than a drafting effort designed to monopolize [the abstract idea]” (Mayo). The FC panel agreed with the DC that the “additional features” of the claims “do no ‘more than simply state the [abstract idea] while adding the words ‘apply it’” (“wholly generic computer implementation” is not enough to “provide[] any ‘practical assurance’”). Mr. Burnett did “not contest that each element of the asserted claims is well-understood, but rather argues that the elements from each claim form new combination” (FN1) that “form a new machine” (citing Diamond, US 1981), but the FC panel disagreed those combinations “transform the abstract idea into a patent-eligible concept”. The FC panel also concluded the DC did not err procedurally.
Federal Circuit summaries 