Customedia Technologies, LLC v. Dish Network Corp. et al.
Docket No. 2018-2239 (CBM2017-00023), 2019-1000 (CBM2017-00032)
PROST, DYK, MOORE
March 6, 2020
Brief Summary: PTAB CBM decisions of patent ineligibility under 101 affirmed (e.g., “computers are invoked merely as a tool”, not to improve functionality)
Summary: Customedia appealed PTAB (“Board”) CBM final written decisions (FWDs) finding certain claims of US 8,719,090 and 9,053,494 relating to “data delivery system[s] for providing automatic delivery of multimedia data products” ineligible under section 101 and certain ‘090 claims invalid for anticipation or obviousness. The FC panel applied the two-step Alice test (US 2014; step 1: whether the claims are directed to an abstract idea, step 2: “whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application”) to the DC’s section 101 patent ineligibility decision. The FC panel explained the claimed technology to be “ensur[ing] memory is available for at least some advertising” “by dedicating a section of the computer’s memory to advertising data”. Under Alice step one, the FC panel concluded that the claims are directed to an “‘abstract idea’ for which computers are invoked merely as a tool”, (“at most an improvement to the abstract concept of targeted advertising wherein a computer is merely used as a tool”) and “not an improvement in the functioning of the computer itself” (citing Enfish, FC 2016 (“claims did not invoke a computer merely as a tool, but rather improved the way the computer itself operated and handled data, allowing more efficient launching and adaptation of databases…not on economic or other tasks for which a computer is used in its ordinary capacity”) and similarly not abstract: Visual Memory, FC 2017 (“the accommodation of different types of processors without compromising performance”), Koninklijke, FC 2019 (“improve[d] the functioning of the overall technological process of detecting systematic errors in data transmissions”), Ancora Techs., FC 2018 (“storing a verification structure in computer memory…a non-abstract improvement in computer functionality because they improved computer security”), Finjan, FC 2018 (“‘behavior-based virus scan’…improvement in computer functionality”, not abstract), Data Engine Techs., FC 2018 (non-abstract “tool able to instantly access all parts of complex three-dimensional electronic spreadsheets”), and Core Wireless, FC 2018 (“improved user interface”, not abstract); SRI Int’l (FC 2019) (“using network monitors to detect suspicious network activity” not abstract); abstract: Affinity Labs., FC 2016 (“providing out-of-region access to regional broadcasts”), TLI Comm., FC 2016 (“storing digital images in an organized manner”), Intell. Vent. (FC 2015) (“providing web pages tailored to an individual user”), Ultramercial, FC 2014 (“displaying an advertisement in exchange for access to copyrighted material”), SAP Am., FC 2018 (analyzing and displaying information), Trading Techs. I and II, FC 2019 (improving a user’s experience, process information more quickly)). Under Alice’s step two, the FC panel found no “inventive concept” since “the claims recite only generic computer components” that is “insufficient to render eligible claims to an abstract idea”. The Board decision was therefore affirmed without discussing the anticipation/obviousness issues.