Docket No. 2018-1407
LOURIE, LINN, TARANTO
December 20, 2018
Brief summary: DC dismissal of suit for failure to state a claim (FRCP 12(b)(6)) after the asserted claims are invalid as patent ineligible abstract ideas under § 101 affirmed (e.g., the claimed system “does not allow the computer to do something it could not previously do.”)
Summary: Glasswall appealed DC dismissal of its infringement suit regarding US 8,869,283 and 9,516,045 under FRCP 12(b)(6) for failure to state a claim as the asserted claims are invalid as patent ineligible abstract ideas under § 101. The DC characterized the “the filtering of electronic files and data” as being directed to an abstract idea (Alice step one analysis (Alice, US 2014)). The FC panel agreed with the DC, writing that the asserted claims “do not purport to claim how the invention receives an electronic file, how it determines the file type, how it determines allowable content, how it extracts all the allowable data, how it creates a substitute file, how it parses the content according to predetermined rules into allowable and nonconforming data, or how it determines authorization to receive the nonconforming data” but, “[i]nstead, the claims are framed in wholly functional terms, with no indication that any of these steps are implemented in anything but a conventional way” (“The use of a conventional white-list of approved application-specific functions instead of a conventional black-list of virus definitions does not change the nature of the claims.”) The FC panel likened this case to Intellectual Ventures I (FC 2016) in which the patent ineligible claims were an abstract idea directed to methods “for receiving data, determining whether the received data matched certain characteristics, and outputting data based on the determining step” (“filtering mail (and likewise filtering email) according to known characteristics was a ‘long-prevalent practice’…The claims here do no more.”; see also Smart Sys. (FC 2017), Elec. Power, (FC 2016), and Content Extrac. (FC 2014)). The FC panel also explained that this case was unlike Finjan (FC 2018) in which the non-abstract “claimed invention employed ‘a new kind of file that enables a computer security system to things that it could not do before’”, and Enfish (FC 2016) in which the claims “were directed to a ‘non-abstract improvement in computer functionality, rather than the abstract idea of computer security [at] large’”. In this case, the FC panel explained, the claimed system “does not allow the computer to do something it could not previously do.” The FC panel also found that “[t]he claims fare no beter under Alice Step 2”. It therefore found no error in the DC’s “resolution of the patent ineligibility in the claims on a Rule 12(b)(6) motion” (see, e.g., Content Extraction, FC 2014; “The alleged ‘factual’ assertions that Glasswall points to as creating genuine issues of material fact are not factual in nature, but conclusory legal assertions which the [DC] was ‘not bound to accept as true.’” (Bell Atl., US 2007)).