Summary
Claims of US patent 7,818,399 in the name of DDR Holdings, LLC were
found to be patent eligible subject matter under 35 USC 101 because the claimed
solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.
Lesson
- To be patentable, a computer
related invention must be necessarily rooted in computer technology in order to
overcome a problem specifically arising in computer technology
- Claims that recite various
computer hardware elements but are in substance directed to nothing more than
the performance of an abstract business practice on the internet or using a
conventional computer are not valid.
- If a non-technological analogue
of the invention can be described, the invention may be patent ineligible
subject matter.
- Claims that pre-empt every
application of an abstract idea are not valid.
Broad description of the invention
The patent is directed to systems
and methods of generating a composite web page that combines certain visual
elements of a “host” website with content of a third-party merchant. For example, the generated composite web page
may combine the logo, background colour, and fonts of the host website with
product information from the merchant. The specification explains that prior
art systems allows third-party merchants to lure the host website’s visitor
traffic away from the host website because visitors would be taken to the
third-party merchant’s website when they clicked on the merchant’s
advertisement on the host site. The patent discloses a system that provides a
solution to this problem (for the host) by creating a new web page that permits
a website visitor, in a sense, to be in two places at the same time. On activation of a hyperlink on the host
website – such as an advertisement for a third-party merchant – instead of taking
the visitor to the merchant’s website, the system generates and directs the visitor
to a composite web page that displays product information from the third-party
merchant, but retains the host website’s “look and feel”. Thus, the host website can display a
third-party merchant’s products, but retain its visitor traffic by displaying
this product information from within a generated web page that gives the viewer
of the page the impression that she is viewing pages served by the host.
Characteristic Claim
The characteristic
claim requires that a data store must store “look and feel” descriptions for a
multiple hosts.
19. A system useful
in an outsource provider serving web pages offering commercial opportunities,
the system comprising:
(a)
a computer store containing data, for each of a
plurality of first web pages, defining a plurality of visually perceptible
elements, which visually perceptible elements correspond to the plurality of
first web pages;
i. wherein
each of the first web pages belongs to one of a plurality of web page owners;
ii. wherein
each of the first web pages displays at least one active link associated with a
commerce object associated with a buying opportunity of a selected one of a
plurality of merchants; and
iii. wherein
the selected merchant, the outsource provider, and the owner of the first web
page displaying the associated link are each third parties with respect to one
other;
(b)
a computer server at the outsource provider,
which computer server is coupled to the computer store and programmed to:
i. receive
from the web browser of a computer user a signal indicating activation of one
of the links displayed by one of the first web pages;
ii. automatically
identify as the source page the one of the first web pages on which the link
has been activated;
iii. In
response to identification of the source page, automatically retrieve the
stored data corresponding to the source page; and
iv. Using the
data retrieve, automatically generate and transmit to the web browser a second
web page that displays: (A) information associated with the commerce object
associated with the link that has been activated, and (B) the plurality of
visually perceptible elements visually corresponding to the source page.
Details
Their Honours considered patent eligibility of claims 1,3 and 19 by
applying the analytical framework of the US Supreme Court decisions Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2010)
and Alic Corp. v. CLS Bank Int’l 134 S. Ct. 2347, 2355 (2014). In a first step of a two-step test, given
the nature of the invention it is determined whether the claims at issue are
directed to a patent ineligible abstract idea.
If so, in a second step of the test, the elements of each claim are
considered – both individually and as an ordered combination – to determine
whether the additional elements transform the nature of the claim into a
patent-eligible application of that abstract idea. The second step is the
search for an “inventive concept,” or some element or combination of elements
sufficient to ensure that the claims amount to “significantly more” than a
patent on an ineligible concept. The majority were of the view that after
Alice, there can be no doubt that recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible. A mathematical
algortithm, including those executed on a generic computer, are abstract ideas
(Benson, 409 U.S. at 64). Some fundamental economic and conventional business
practices are also abstract ideas (hedging in the case of Bilski, 130 S. Ct at
3231, intermediated settlement in the case of Alice, 134 S. Ct. at 3246). The
majority noted that Ultramercial, Inc v Hulu, LLC, _F.3d_, 2014WL5904902 (Fed.
Cir. 2014), buySafe, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014), Accenture Global Servs., GmbH v Guidewire Software, Inc., 728 F .3d
1336, (Fed. Cir. 2013), and Bancorp Servd., L.L.C. v. Sun Life Assure. Co of
Canada (U.S.), 687 F.3D 1255, 1278 (Fed. Cir. 2012) considered claims that
recited various computer hardware elements
but where in substance directed to nothing more than the performance of
an abstract business practice on the Internet or using a conventional computer,
and that such claims are not patentable. The bare fact that a computer exists
in the physical rather than purely conceptual realm “is besides the point”. Under
supreme court precedent, the
claims of these cases where recited too broadly and generically to be
considered sufficiently specific and meaningful applications of their
underlying abstract ideas [emphasis added].
The majority noted that the claims do not recite a mathematical
algorithm, a fundamental economic or longstanding commercial practice. In their view, although the claims address a
business challenge (retaining website visitors), it is a challenge particular
to the internet that is not abstract. Consequently, step one was not satisfied and
the invention was not of the judicially created exception of patent-ineligible
abstract ideas, in the view of the majority.
While the claims involve both a computer and the internet, the
claims stand apart because they do not merely recite the performance of some
business practice known from the pre-internet world along with the requirement
to perform it on the internet. Instead, the claimed solution is necessarily rooted
in computer technology in order to overcome a problem specifically arising in
the realm of computer networks [emphasis added].
The dissenting Judge, however, was of the view that the invention
related to the step-one abstract idea of the patent as “an online merchant’s
sales can be increased if two web pages have the same “look and feel”. The dissenting Judge suggested that the
concept of a “store within a store” is the pre-internet analogue. The majority considered that a store within a
store did not have to account for the ephemeral nature of an internet location
or the near instantaneous transport between these locations made possible by
standard internet communication protocols, which introduces a problem that does
not arise in the “brick and mortar” context.
There is no possibility that by walking up to a store within a store
(kiosk in a warehouse store, for example), the customer will be suddenly and
completely transported outside the warehouse store and relocated to a separate
physical venue. Unlike Ultramercial,
the claims do not broadly and generically claim “use of the internet” to
perform an abstract business process.
The claims do not attempt to pre-empt every application of the idea
of increasing sales by making two web pages look the same. Rather, they recite a specific way to
automate the creation of a composite web page. The claims include additional
features that ensure the claims are more than a drafting effort designed to
monopolise the [abstract idea] Alice, 134 S. Ct. at 2357.