Claims of US patent 7,603,382 in the name of Intellectual Ventures were
found to be patent eligible subject matter under 35 USC 101 because the '382 patent describes an idea
and solution for customized web page content, instead of working in a
"normal, expected manner," thus, "the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks."
- Internet-centric challenges
that do more than recite a common place business method aimed at processing
business information or applying a known business process to particular
technological environment may be patent eligible.
Broad description of the invention
The ‘382 patent claims a method and a system for selectively
tailoring information delivered to an Internet user depending upon the
particular needs of the user.
receiving data from a user profile
associated with a user;
in response to a request associated
with the user, sending a data stream that is selected based at least in part on
the received data from the user profile; and
displaying the data stream via an
interactive interface, the interactive interface comprising:
a display depicting portions of a
web site visited by the user as a function of web site navigation data; and
a display depicting portions of a
web site visited by the user based at least in part on the received data from
the user profile.
Whether a claim is drawn to
patent-eligible subject matter under 35 U.S.C. § 101 is a threshold inquiry to
be determined as a matter of law in establishing the validity of the patent. CLS Bank Int'l v. Alice Corp. Pty.
Ltd., 717 F.3d 1269,
1277 (Fed. Cir. 2013), aff'd, Alice Corp. Pty. Ltd. v. CLS Bank
Int'l, ___ U.S.
___, 134 S.Ct. 2347 (2014); In re Bilski, 545 F.3d 943, 950 (Fed. Cir. 2008) (citing In re Comiskey, 499 F.3d 1365, 1371 (Fed. Cir.
("Bilski I"). Section 101 provides that patentable subject
matter extends to four broad categories, including: "new and useful
process[es], machine[s], manufacture, or composition[s] of matter." 35
U.S.C. § 101; see also Bilski v. Kappas, 561 U.S. 593, 601 (2010) ("Bilski
Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980). A "process" is
statutorily defined as a "process, art or method, and includes a new use
of a known process, machine manufacture, composition of matter, or
material." 35 U.S.C. § 100(b). The Supreme Court has explained:
A process is a mode of treatment of
certain materials to produce a given result. It is an act, or a series of acts,
performed upon the subject-matter to be transformed and reduced to a different
state or thing. If new and useful, it is just as patentable as is a piece of
machinery. In the language of the patent law, it is an art. The machinery
pointed out as suitable to perform the process may or may not be new or
patentable; whilst the process itself may be altogether new, and produce an
entirely new result. The process requires that certain things should be done
with certain substances, and in a certain order; but the tools to be used in
doing this may be of secondary consequence.
The Supreme Court recognizes three
"fundamental principle" exceptions to the Patent Act's subject matter
eligibility requirements: "laws of nature, physical phenomena, and
abstract ideas." Bilski II, 561 U.S. at 601. The Supreme Court has held that
"[t]he concepts covered by these exceptions are `part of the storehouse of
knowledge of all men ... free to all men and reserved exclusively to none.'"
Bilski II, 561 U.S. at 602 (quoting Funk Bros. Seed Co. v. Kato
Inoculant Co., 333
U.S. 127, 130 (1948)). "[T]he concern that drives this exclusionary principle is one of
pre-emption," that is, "`that patent law not inhibit further
discovery by improperly tying up the future use of' these building blocks of
human ingenuity." Alice, 134 S.Ct. at 2354 (citing Bilski II, 561 U.S. at 611-12 and Mayo Collaborative Services v.
Prometheus Labs., Inc., 566 U.S. ___, 132 S.Ct. 1289, 1301 (2012)).
Although a fundamental principle
cannot be patented, the Supreme Court has held that "an application of a
law of nature or mathematical formula to a known structure or process may well
be deserving of patent protection," so long as that application would not
preempt substantially all uses of the fundamental principle. Bilski II, 561 U.S. at 612 (quoting Diehr, 450 U.S. at 187) (internal quotations omitted); Bilski/, 545 F.3d at 954. The Supreme Court recently
reiterated the framework for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible applications
of those concepts. First, we determine whether the claims at issue are directed
to one of those patent-ineligible concepts. If so, we then ask, "[w]hat
else is there in the claims before us?" To answer that question, we
consider the elements of each claim both individually and "as an ordered
combination" to determine whether the additional elements "transform
the nature of the claim" into a patent-eligible application. We have
described step two of this analysis as a search for an "`inventive concept'"
— i.e., an element or combination of elements that is "sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."
Alice Corp., 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1294, 1296-98). "[T]o transform an
unpatentable law of nature into a patent-eligible application of such a law,
one must do more than simply state the law of nature while adding the words
`apply it.'" Mayo, 132 S.Ct. at 1294 (citing Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972)). It is insufficient to add steps
which "consist of well-understood, routine, conventional activity,"
if such steps, "when viewed as a whole, add nothing significant beyond the
sum of their parts taken separately." Id. at 1298. "Purely
`conventional or obvious' `[pre]-solution activity' is normally not sufficient
to transform an unpatentable law of nature into a patent-eligible application
of such a law." Id. (citations omitted). Also, the
"prohibition against patenting abstract ideas `cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding `insignificant postsolution activity.'" Bilski II, 561 U.S. at 610-11 (citation omitted). For instance,
the "mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S.Ct. at 2358. "Given the ubiquity of
computers, wholly generic computer implementation is not generally the sort of
`additional featur[e]' that provides any `practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.'" Id. (citations omitted).
The court finds the comparison of Bancorp
Servs., LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266 (Fed.
Cir. 2012), to SiRF Tech., Inc. v. Int'l Trade
Comm'n, 601 F.3d
1319 (Fed. Cir. 2010), instructive. In Bancorp, where the asserted patents disclosed
"specific formulae for determining the values required to manage a stable
value protected life insurance policy," the district court granted summary
judgment of invalidity under§ 101. Bancorp, 687 F.3d at 1270. Under the
machine prong of the machine or transformation test, the district court found
that "the specified computer components are no more than objects on which
the claimed methods operate, and that the central processor is nothing more
than a general purpose computer programmed in an unspecified manner." Id.
at 1273. In affirming the district court's findings, the Federal Circuit
explained that theuse of a computer in an otherwise patent-ineligible process
for no more than its most basic function — making calculations or computations
— fails to circumvent the prohibition against patenting abstract ideas and
mental processes. As we have explained, "[s]imply adding a `computer
aided' limitation to a claim covering an abstract concept, without more, is
insufficient to render the claim patent eligible." Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir.
To salvage an otherwise patent-ineligible
process, a computer must be integral to the claimed invention, facilitating the
process in a way that a person making calculations or computations could not. Id. at 1278. Ultimately, the Federal
Circuit concluded that "[t]he computer required by some of Bancorp's
claims is employed only for its most basic function, the performance of
repetitive calculations, and as such does not impose meaningful limits on the
scope of those claims." Id. at 1278.
In contrast to Bancorp, the
Federal Circuit in SiRF found that a GPS receiver was
"integral" to the claims at issue and, therefore, the machine or
transformation test was satisfied. SiRF, 601 F.3d at 1332. As in Bancorp, the SiRF
Court emphasized that a machine will only "impose a meaningful limit on
the scope of a claim [when it plays] a significant part in permitting the
claimed method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly, i.e., through
the utilization of a computer for performing calculations." Id. at
1333. After noting how the GPS receiver was specifically involved in each step
of the method, the Court concluded that "the use of [the] GPS receiver is
essential to the operation of the claimed methods." Id.
In sum, although it is "clear
that computer-based programming constitutes patentable subject matter so long
as the basic requirements of [35 U.S.C.] § 101 are met," AT&T,
172 F.3d at 1360, the requirements of § 101 as applied to this area of
technology have been a moving target, from the complete rejection of
patentability for computer programs to the much broader enunciation
of the test in State Street Bank & Trust Co. v.
Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), abrogated by In re Bilski, 545 F.3d 943., that is, "a
computer-implemented invention was considered patent-eligible so long as it
produced a `useful, concrete and tangible result.'" DDR Holdings, LLC
v. Hotels.Com, L.P., Civ. No. 2013-1505, 2014 WL 6845152, at *10 (Fed. Cir.
Dec. 5, 2014). As instructed by the Federal Circuit in DDR Holdings, the
Court's most recent attempt to bring clarity to this area of the law: (1)
"recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible," id. at *9; (2)
"mathematical algorithms, including those executed on a generic computer,
are abstract ideas," id.; (3) "some fundamental economic and
conventional business practices are also abstract ideas," id.; and
(4) general use of the Internet "to perform an abstract business practice
(with insignificant added activity)" does not pass muster under§ 101, id.
at *12. In order for claims addressing "Internet-centric challenges"
to be patent eligible, the claims must do more than
recite a commonplace business method
aimed at processing business information, applying a known business process to
the particular technological environment of the Internet, or creating or
altering contractual relations using generic computer functions and
conventional network operations, such as the claims in Alice, Ultramercial,
buySAFE, Accenture, and Bancorp. Id. (citing Alice, 134 S.Ct. at 2359; Ultramercial, 2014 WL
5904902, at *5, 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, 1344-45 (Fed. Cir. 2013); Bancorp, 687 F.3d at 1278).
The '382 patent describes "a
system for selectively tailoring information delivered to an Internet user
depending upon the particular needs of the user." ('382 patent, 1:17-19)
The specification explains that the standard Internet use results in a Web page
"appear[ing] identical[ly] to each information user," with "no
tailoring of information to each information user." (Id. at
3:10-12) The system of the patent purports to address "current problems
with the Internet" by allowing a user to create "a detailed standard
profile ... having a tremendous amount of detail and [then] selectivity [use]
this profile ... with any information provider that accepts the standard format."
(Id. at 1:44; 4:22-26) Multiple profiles may be created. (Id. at
3:50-53, 59-65) The "profile is stored in a computer memory (not shown)
and transferred to an information provider ... when a [w]eb page is
accessed." (Id. at 4: 10-13) "This system allows the
information provider to selectively provide information to the information user
without the information user's knowledge or without irking the information user
by telling them they need a password, or they need to be a member." (Id.
at 6:39-43) "[A] company [may] tailor the delivery of information to a
specific user," based on the profile. "The web page manager selects
[the] most appropriate data streams for the current information user ...
depending upon the currently available data streams and the profile of the
individual." (Id. at 6:19-33) This results in "a virtual
panoply of information which is placed in a mosaic most pleasing to the
information users." (Id. at 4:30-31) The specification also
describes that "[t]he system includes an interactive interface which
provides a medium for information users to communicate with information
providers." (Id. at 2:6-9) The four independent claims consist of
one system claim and three method claims.
Following the Alice
framework, the parties generally agree that the central idea of the claims is
providing a customized web page with content based on the user's profile and
website navigation history. Claims 1, 16, and 21 may be broken down to some or
all of the following steps: (1) receiving data from a user profile; (2) storing
such data; and (3) using such data to display a web page via an interactive
interface where the display contains content based on a user's navigation data
and content based on a user's personal characteristics. Claim 7 uses "data
streams" and consists of: (1) generating data streams (which are matched
to a profile) where each data stream is associated with a portion of the web
page and stored in memory; and (2) changing the portions of the web page with
time. Defendants argue that such an idea is "abstract and
The Federal Circuit, applying step
two of the Alice framework, explained in DDR Holdings that, in
order for claims addressing "Internet-centric challenges" to be
patent eligible, the claims must do more than "recite a commonplace
business method aimed at processing business information [or] applying a known
business process to the particular technological environment of the
Internet...." 2014 WL 6845152 at *12. Id. at *10, 12. Instead of working in a "normal,
expected manner," the '382 patent describes an idea and solution for
customized web page content, thus, "the claimed solution is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." Id. at *10, 12. The claims do not preempt all applications of
providing customized web pages, as they recite a specific method of customizing
web pages based on user data. The court concludes that the '382
patent passes muster under the Alice framework and recites patentable