Claims of US patents in the name of Content Guard Holdings were
found to be patent eligible subject matter under 35 USC 101 because they are
directed to method and systems of managing digital rights using specific and
non-generic “trusted” devices and systems.
Broad description of the invention
the meaning of the claimed feature of a a ‘trusted device’ is somewhat
nebulous, it underscores that the subject matter is narrow and limited to
devices that maintain physical communications and behavioural integrity, rather
then all devices that are capable of receiving
content via the internet.
matter that is narrowly claimed is more likely to be patent eligible.
The patents are generally directed
towards systems and methods for controlling the use and distribution of digital
works in accordance with usage rights through the use of trusted systems.
Claim 1 of U.S. Patent No. 8,393,007
is: A computer-implemented method of distributing digital content to at least
one recipient computing device to be rendered by the at least one recipient
computing device in accordance with usage rights information, the method
determining, by at least one sending
computing device, if the at least one recipient computing device is trusted to
receive the digital content from the at least one sending computing device;
sending the digital content, by the
at least one sending computing device, to the at least one recipient computing
device only if the at least one recipient computing device has been determined
to be trusted to receive the digital content from the at least one sending
computing device; and sending usage rights information indicating how the
digital content may be rendered by the at least one recipient computing device,
the usage rights information being enforceable by the at least on recipient
ContentGuard asserted claims from
six related patents issued to Mark Stefik: U.S. Patent No. 8,393,007 ("the
`007 patent"); U.S. Patent No. 8,370,956 ("the `956 patent");
U.S. Patent No. 7,523,072 ("the `072 patent"); U.S. Patent No.
7,269,576 ("the `576 patent"); andU.S. Patent No. 6,963,859
("the '859 patent") (collectively, the "Stefik Patents").
ContentGuard also asserted claims from two related patents issued to Mai
Nguyen: Claims U.S. Patent No. 7,774,280 ("the 280 patent"); and U.S.
Patent No. 8,001,053 ("the `053 patent") (collectively, the
The Stefik Patents are generally
directed toward systems and methods for controlling the use and distribution of
digital works in accordance with "usage rights" through the use of
"trusted" systems. The Court construed "trusted" to require
that three types of "integrities"—physical, communication, and
behavioral—be maintained. Similarly, the Nguyen Patents are generally directed
toward systems and methods for controlling the use and distribution of digital
works in accordance with "usage rights"—and more particularly,
"meta-rights"—through the use of "trusted" systems.
Defendants contend that the above
claims are directed to patent-ineligible subject matter and therefore are
invalid under 35 U.S.C. § 101. More specifically, Defendants argue that the
Stefik Patents address nothing more than the "abstract idea of enforcing
usage rights and restrictions on digital content." Similarly, Defendants
argue that the Nguyen Patents address nothing more than the "abstract idea
of enforcing sublicensing rights and restrictions (which the patents name
`meta-rights') on digital content." (Motion at 28).
35 U.S.C. § 101 provides that:
Whoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
In deciding Alice
Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) ("Alice"),
the Supreme Court addressed a series of cases concerning the patent eligibility
of software claims under 35 U.S.C. § 101. See Ass'n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) ("Mayo");
Kappos, 561 U.S. 593, 130 S. Ct. 3218 (2010) ("Bilski").
In Alice, the Court reiterated that the right of inventors to obtain patents,
as codified in § 101, "contains an important implicit exception: Laws of
nature, natural phenomena, and abstract ideas are not patentable." 134 S. Ct. at
2354 (citing Myriad, 133
S. Ct. at 2116).
In determining whether to apply this
exception under § 101, courts "must distinguish between patents that claim
the `buildin[g] block[s]' of human ingenuity and those that integrate the
building blocks into something more, thereby `transform[ing]' them into a
patent-eligible invention." Alice, 134 S.
Ct. at 2354. To make that distinction, courts apply a two-step test
originally articulated in Mayo, and reaffirmed in Alice. This test requires the
Court to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts," e.g., an abstract idea. Id. at 2355. If
the challenged claims satisfy this "ineligible concept" step, the
court must then "determine whether the additional elements `transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 132 S.
Ct. at 1296-97). In this second, "inventive concept" step,
the Court considers the elements of each claim both individually and "as
an ordered combination" in order to determine if an element or combination
of elements within the claims are "sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself." Id.
In order to prevail on a § 101
challenge, the movant must show that the challenged claims first fail the
"ineligible concept" step and then fail the "inventive
concept" steps of the Alice test. In this case, Defendants contend the
Patents-in-Suit fail both steps. For example, Defendants contend claim 1 of the
`007 Patent fails the first step of the Alice test because it is directed to an
abstract idea and "recites elements of a process that can be, and has
been, performed by humans without computers."
Defendants also argue that claim 1
of the `007 Patent fails the second, "inventive concept" step because
"[t]here is no inventive element that renders [it] patentable ."
After consideration of all the
evidence and the arguments presented, the Court finds that the Patents-in-Suit
are directed toward patent-eligible subject matter. In particular, the Patents in-Suit
are not directed toward an abstract idea, at least because they are directed
toward patent eligible methods and systems of managing digital rights using
specific and non-generic "trusted" devices and systems. See, e.g.,
(Response at 13 ("This is significant because it underscores that the
subject matter of the Trusted Repository Patents is narrow, i.e., limited to
devices that maintain physical, communications, and behavioral integrity,
rather than all devices that are capable to receive content via the
Internet.")). Further, even arguendo, if the Court found that the patents
are simply directed toward the "abstract idea of enforcing usage rights
and restrictions on digital content" as Defendants propose, which it does
not, the claim limitations, individually and "as an ordered combination,"
are sufficient to ensure that the Patents-in-Suit amount to "significantly
more" than a patent simply on that abstract idea. See Alice, 134 S.
Ct. at 2355. For example, the claims require that the
"repository" be a "trusted system" which the Court
construed as "maintain[ing] physical, communications, and behavioral
integrity in the support of usage rights," in order to manage digital
rights. At the very least, the Patents-in-Suit disclose particular solutions
for the problem of "enforcing usage rights and restrictions on digital
content" that "(1) [do] not foreclose other ways of solving the
problem, and (2) recite a specific series of steps that result in a
departure from the routine and conventional" way of managing digital
Patents Corp. v. Active Network, Inc., No. 2014-1048, 2015 WL 3852975, at *6
(Fed. Cir. June 23, 2015).