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Claims of US patent 5,961,601 in the name of International Business Machines
were found to be patent eligible subject matter under 35 USC 101 because the
heart of the invention is a specific concept of recursively embedding state in continuations,
that has no “bricks and mortar” analogy.
For similar reasons, the claims of the other considered patents were
found to be patent eligible subject matter.
Comments
- When considering patentability
of Information technology ideas, the inquiry involves discerning the heart of
the patented invention. Care should be
taken to avoid over generalisation but not be hypersensitive to technical
language.
Broad description of the invention
The '601 patent is entitled "Preserving State Information in a
Continuing Conversation Between a
Client and Server Networked Via a Stateless
Protocol" and was issued on October 5, 1999. It
describes an invention
meant to allow computers to preserve state while communicating over
networks
(such as the Internet) using stateless protocols (such as HyperText Transfer
Protocol (or
"HTTP")). ('601 patent, Abstract; see also id., col.
1:8-15)
Characteristic Claim
1. A computerized method for
preserving state information in a conversation between a client adapted to
request services from one or more servers which are networked via a stateless
protocol to the client, said services including one or more of data and
programs which the client may request, wherein the conversation is a sequence
of communications between the client and one or more servers for said services
wherein each response from the server includes one or more continuations which
enable another request for said services and wherein the client must invoke one
of the continuations to continue the conversation, the method comprising the
steps of:
[(1)] the client initiating the
conversation with the server using the stateless protocol;
[(2)] detecting when the request for
a service requires preservation of the state information;
[(3)] performing said service and
identifying all continuations in an output from said service, in response to
said step of detecting;
[(4)] recursively embedding the
state information in all identified continuations; and
[(5)] communicating the output to
the client, in response to said step of embedding; wherein the state
information is preserved and provided to all services for the duration of the
conversation.
Details
Single representative claim analysis
The court considered claim 1 as
being representative. The analysis was
thus cofined to claim 1 and the outcome subsequently applied to all other
claims. In Cronos Techs., LLC v.
Expedia, Inc., C.A. No. 13-1538-LPS, C.A. No. 13-1541-LPS, C.A. No.
13-1544-LPS, 2015 WL 5234040 (D.Del. Sept. 8, 2015), our Court noted
"several considerations relevant to deciding a Rule 12 motion that
challenges the patent eligibility of multiple patent claims based on analysis
of a single representative claim." 2015 WL 5234040, at *2. The Cronos
Court set out these considerations as follows:
First, are all non-representative
claims adequately represented by the representative claim (i.e., do all
of the challenged claims relate to the same abstract idea and do any of
the non-representative claims add one or more inventive concepts that would
result in patent eligibility)? Second, are there issues of claim construction
that must be decided before resolving the motion? Finally, is there any
set of facts that could be proven relating to preemption, questions of
patentability, or whether the claims "solve a technological problem,"
that would result in a determination that one[] or more of the claims are
patent-eligible?
Id. (citations and footnotes omitted) (emphasis in
original); see also Execware, 2015 WL 5734434, at *2.
Assessing Patentable Subject Matter
Patent-eligible subject matter is
defined in Section 101 of the Patent Act:
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.
Yet while the scope of Section 101
is broad, there is an "important implicit exception [to it]: [l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank
Int'l, 134 S.Ct.
2347, 2354 (2014) (citation omitted); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S.Ct. 1289, 1293 (2012). "Phenomena of nature, though just
discovered, mental processes, and abstract intellectual concepts are not
patentable, [because] they are the basic tools of scientific and technological
work." Prometheus, 132 S. Ct. at 1293 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
The Supreme Court of the United
States has also recognized, however, that "too broad an interpretation of
this exclusionary principle could eviscerate patent law." Id.; see
also Alice, 134 S. Ct. at 2354. This is because "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Prometheus, 132 S. Ct. at 1293; see also Alice, 134 S. Ct. at 2354. To that end, it has explained that
"an application of a law of nature, [natural phenomena or abstract
idea] to a known structure or process may well be deserving of patent
protection." Diamond v. Diehr, 450 U.S. 175, 187 (1981) (emphasis in original).
In terms of the process used to
analyze patent eligibility under Section 101, the Federal Circuit has explained
that a court should first identify whether the claimed invention fits within
one of the four statutory classes set out in the statute: processes, machines,
manufactures, and compositions of matter. Ultramercial III, 772 F.3d at 713-14. The court must then assess whether
any of the judicially recognizable exceptions to subject matter eligibility
apply, including whether the claims are to patent-ineligible abstract ideas. Id.
at 714.[2]
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."
1. The Invention
The patent's specification explains
that network protocols provide standard methods that permit computers to
communicate with each other by indicating how data should be formatted for
receipt and transmission across networks (such as between, for example, clients
and servers). (Id., col. 3:15-18) Some network protocols are stateless,
meaning that every communication between a client and server is treated
independently, such that the server does not maintain a record of previous
communications. (Id., cols. 2:25-28, 3:66-4:3) One such stateless
protocol is HTTP, which the patent describes as "[t]he most common method
of communicat[ion]" between users and website servers. (Id., cols.
2:25, 4:32-33) Webpage documents (which make up websites) that use HTTP are
formatted with a language known as HyperText Markup Language
("HTML"). (Id., col. 4:45-59) An internet user can switch
among different webpages by clicking on highlighted words or phrases known as hyperlinks.
(Id., col. 1:51-54) These clickable links are examples of
"continuations" — a new request that a client sends to the server,
with the server responding with one or more continuations. (Id., col.
2:48-52) Therefore, through the process of clicking through different hypertext
links, a client engages in a conversation with a server. (Id., cols.
2:48-63, 7:8-10)
Because HTTP is stateless, there is
no inherent way for computers to keep track of the state of an ongoing series
of communications between a client and a server utilizing HTTP. (Id.,
col. 7:32-40) Thus, for instance, if a client requests a page numerous times,
the server does not maintain any history or knowledge of the previous
connections. (Id., col. 7:32-34) And when a client clicks on a hyperlink,
there is no way for the client to communicate additional information with the
request. (Id., col. 7:34-36) While usage of stateless protocol provides
for simple and efficient communication between computers, there are
circumstances in which it is desirable to preserve state information during
communications. (Id., cols. 4:3-6, 7:37-39) For example, a server
handling business transactions using HTTP needs state information (such as the
client's user ID and the transaction number) in order to effectively process
orders. (Id., col. 7:41-45; see also D.I. 1 at ¶ 20 (explaining
that "online merchants can use state information to keep track of a
client's product and service selections while the client is shopping and then
use that information when the client decides to make a purchase"))
The patent describes several
"[c]urrent [m]ethods for [h]andling [s]tate on the [w]eb." ('601
patent, col. 7:49) One such method is for a client to pass arguments to a
Common Gateway Interface ("CGI") program, but it can be cumbersome
for a client to follow the exact command syntax required to utilize this
method. (Id., cols. 4:33-36, 7:50-57) An easier, more convenient way for
a client to invoke a CGI program is to allow the user to input arguments via
HTML "forms" — the user fills in the appropriate fields and clicks
the "send" button to send the information to the server. (Id.,
col. 7:57-66) These forms may include hidden variables containing state which
are not displayed to clients but which are passed to the server when the client
sends the form. (Id., col. 8:3-6) The client and server pass state
information back and forth, with the server creating HTML forms on the fly and
embedding the state information in hidden fields, and with the client
completing and submitting the forms back to the server. (Id., col.
8:20-32) The drawback to this approach is that if a client wishes to browse
different HTML files in the middle of a session, the state information will be
lost as soon as the client switches to a different HTML file. (Id., col.
8:33-46) Another solution in the prior art, utilized by Netscape
Communications, entailed the use of "cookies": small files stored at
the client's computer that keep track of state information. (Id., cols.
8:66-9:10) The cookie approach has several disadvantages, however — it is
cumbersome to maintain, it is only compatible with certain clients and servers,
and it renders it difficult to keep track of state information relating to
multiple conversations on the same computer. (Id., col. 9:11-27)
The invention purports to claim a
mechanism for preserving state in a stateless protocol that overcomes the
drawbacks of these prior art solutions. (Id., cols. 7:37-40, 8:47-49,
9:28-43) The patentee's claimed method and system entails the preservation of
state by "recursively embedding" the state information in
continuations, such as hypertext links, during a conversation. (Id.,
Abstract & cols. 9:57-10:3)
Alice's step one
Under step one of Alice,
"the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter" (here, an
abstract idea). Internet Patents Corp. v. Active
Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015); see also Execware, LLC, 2015 WL
5734434, at *4; Gammino v. Am. Tel. & Tel. Co., ___ F.Supp. 3d ___,
C.A. No. 12-666-LPS, 2015 WL 5234028, at *5 (D.Del. Sept. 8, 2015).[5]
"The `abstract ideas' category embodies `the longstanding rule that [a]n
idea of itself is not patentable.'" Alice, 134 S.Ct. at 2355 (quoting Gottschalk, 409 U.S. at 67). The abstract idea can be, but
need not amount to, a "preexisting, fundamental truth" about the
natural world "that has always existed," or a "method of
organizing human activity" (such as a "longstanding commercial practice").
Id. at 2356 (citations omitted); see also DDR Holdings, 773 F.3d at 1256-57; cf. CLS Bank, 717 F.3d at 1286 (explaining that a claim directed
to an abstract idea is one directed to a `"disembodied concept' . . a
basic building block of human ingenuity, untethered from any real-world application")
(citation omitted). Beyond that, the concept of an "abstract idea"
has not been crisply defined. Alice, 134 S.Ct. at 2357 (declining to "labor to
delimit the precise contours of the `abstract ideas' category"); Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d
1306, 1331 (Fed. Cir. 2015) (recognizing that application of the abstract idea concept can be
difficult, "a problem inherent in the search for a definition of an
`abstract idea' that is not itself abstract").
In Internet Patents Corp. v. Active
Network, Inc., 790
F.3d 1343 (Fed. Cir. 2015), in order to ascertain the basic character of the claimed subject matter
at step one, the Federal Circuit examined the specification of the patent at
issue. In doing so, it cited to what the patentee had described as "the
innovation over the prior art" and "the essential, `most important
aspect'" of the patent. Internet Patents, 790 F.3d at 1348;[6] see also Execware,
LLC, 2015 WL 5734434, at *4 (explaining at step one of Alice that
"the `character as a whole' [of the relevant claim] is clear from reading
the specification"). In attempting to pinpoint a claim's "character
as a whole" at step one, courts should be conscious to "avoid
overgeneralizing, [and yet should also be] cautious of hypersensitivity to
technical language" — the inquiry "is one of discerning the heart of
the patented invention/true nature of the claim." Intellectual Ventures
I LLC v. Erie Indem. Co., ___ F.Supp. 3d ___, Civil Action Nos.
1:14-cv-00220, 2:14-CV-01130, 2:14-CV-01131, 2015 WL 5686643, at *13 (W.D. Pa.
Sept. 25, 2015) (citing cases); see also Alice, 134 S. Ct. at 2354; SimpleAir, Inc. v. Google Inc.,
___ F.Supp. 3d ___, Case No. 2:14-cv-00011-JRG, 2015 WL 5675281, at *4 (E.D.
Tex. Sept. 25, 2015) (explaining that the inquiry at step one of the Alice
test "is not whether the Court is able [to] reach into a patent and
extract an abstract idea from which to determine patent-eligibility . . . . [i]nstead
the Court is directed to examine the [asserted patent] and to determine whether
[it is] directed to an abstract idea").
Here, Defendants contend that the
claims of the '601 patent "attempt to monopolize an abstract idea[,]"
which they articulate as "keeping track of prior communications during a
conversation between computers." (D.I. 19 at 14-15; D.I. 25 at 8; Tr. at
90-91) Plaintiff responds that this "over simplification glosses over
important differences between the claimed inventions and alternative
mechanisms," and that the patent is eligible under step one of Alice
because it "is directed to a discrete solution to [a] computer-specific
problem[.]" (D.I. 23 at 14; see also Tr. at 109-10) For a number of
reasons, the Court agrees with Plaintiff that Defendants' articulation does not
capture the true character of the '601 patent's invention.
An initial problem with Defendants'
approach is that their primary focus here was not on the words of the patent;
instead, Defendants focused largely on allegations in Plaintiff's Complaint. (See,
e.g., D.I. 25 at 8 ("Again, . . . it is Plaintiff's Complaint . . .
that is the source of the abstract idea articulation."); see also
D.I. 19 at 15) Worse, Defendants misread those allegations in a manner that leads
to an overly broad assertion as to what is the abstract idea at the heart of
the patent's claims. Specifically, Defendants claim that Paragraph 20 of
Plaintiff's Complaint "describ[es] the invention as `allow[ing] clients
and servers to keep track of prior communications during a
conversation[.]'" (D.I. 25 at 8 n.17; see also D.I. 19 at 15) But
the Complaint clearly does not use this phraseology to describe the basic
character of the invention in the '601 patent. Rather, Plaintiff introduces the
field of the invention by explaining that, as a general matter, "[s]tate
information allows clients and servers to keep track of prior communications
during a conversation." (D.I. 1 at ¶ 20) Importantly, though, Plaintiff's
Complaint goes on to describe the actual invention here by stating that it is
directed to "a better technique of preserving state information in
Internet communications" — i.e., to "novel methods of recursively
embedding state information into communications between clients and
servers." (Id. at ¶¶ 20-21 (emphasis added); see also Tr. at
110 (Plaintiff's counsel explaining that "you can't look at [claim 1 of
the '601 patent] and say this claim is directed to just preserving state
information because the meat of the claim is about how to do it. This claim is
directed to recursively embedding state information in all continuations. . . .
The rest of the claim isn't the invention. The invention is the recursively
embedding."))
That claim 1 is not directed to the
alleged abstract idea put forward by Defendants is confirmed by looking at the
'601 patent's specification. For example, the patent's Abstract explains that
what is disclosed is:
A method and system for preserving
state in computers communicating over networks . . . using stateless protocols.
. . . State is preserved in a conversation . . . by performing the service and
identifying all continuations (hyperlinks) in an output from the service; recursively
embedding the state information in all identified continuations in the output
sent to the client.
('601 patent, Abstract (emphasis
added)) The specification goes on to provide great detail about certain
then-current methods for preserving state (and their drawbacks), (id.,
cols. 7:49-9:37), before again noting the inventors' claimed solution: "the
embedding of state information" in communications between computers using
stateless protocols, (id., col. 10:4-5). Time and again, when referring
to the "present invention," the specification describes it as
"the present invention for embedding state information[.]" (Id.,
col. 10:38, 42-43, 47; see also id., col. 16:1-4)[7] Indeed, many
of the patent's figures — and all of the figures that do not depict
prior art mechanisms for preserving state — work to illustrate the
"recursively embedding" concept claimed by the patent. (Id.,
FIGS. 4-9c) The "innovation over the prior art" described in the
patent's specification, then, is not simply "keeping track of prior
communications during a conversation between computers." Instead, it is to
a new way of accomplishing that — an assertedly better method than
existed in the prior art.
Unsurprisingly, the "basic
character" of the claim can not only be ascertained by reading the
specification — it can be found in the text of claim 1 itself. This is seen in
step 4's requirement of "recursively embedding the state information in
all identified continuations" and in step 5's requirement that as to
subsequent communications between the server and client, state information is
preserved and provided in just this way. (Id., col. 18:18-23) In
describing their view as to these portions of claim 1, Defendants suggest that
the claim "merely deconstructs [the] task [of keeping track of the items
in a current purchase] into its constituent and inherent steps." (D.I. 19
at 16) Yet that assertion simply ignores the elephant in the room — the claim's
"recursively embedding" -related limitations. The "recursively
embedding" concept is clearly not an "inherent" step for keeping
track of state, as confirmed by the patent's detailed descriptions of the
various prior art methods used to accomplish this task.
In arguing that the claim fails step
one's test, Defendants placed significant stock in their assertion that the
claim's steps can be easily implemented in a "non-computerized `brick and mortar'"
context: that of a customer's placement of a telephonic order with a merchant.
(Id. at 17-18; D.I. 25 at 9; Tr. at 95); see also Symantec Corp., 100 F.Supp. 3d at 383 ("[One] helpful way of
assessing whether the claims of [a] patent are directed to an abstract idea is
to consider if all of the steps of the claim could be performed by human beings
in a non-computerized `brick-and-mortar' context."). Defendants' analogy
(as revised in their reply brief) related to a telephone conversation
between a customer and a merchant, the
details of which are set out in a table in the decision, linked above.
The role of the brick and mortar analogy in the
Section 101 inquiry, as even Defendants acknowledge, is to illustrate that the
invention at issue "simply take[s] a well-known and widely applied
business practice and appl[ies] it" using generic computers and/or the
Internet. DDR Holdings,
773 F.3d at 1264 (Mayer, J., dissenting); (see also D.I. 19 at 10-11 ("Where a
claim's limitations simply lay out an interaction that can be and routinely is
performed by humans, this demonstrates that the claim is directed to an
abstract idea and not rooted in computer technology.") (emphasis added);
Tr. at 72 (Plaintiff's counsel explaining that "the idea of a
brick-and-mortar analogy is supposed to be . . . looking at what humans were
already doing. They were going to the supermarket. They were buying low and
selling high. They were advertising in the newspaper. And those steps are just
being done now on the Internet")). In other words, if the heart of a
patent claim has a pre-computer or pre-Internet real-world analog, that might
help to crystallize the abstractness of a claim that in some way implicates the
use of computer technology. That is, it may help to demonstrate that such
technology simply amounts to an insignificant "add" to the claim —
one meant, for example, only to allow the abstract idea to be implemented more
quickly via a different (i.e., computerized) medium. See, e.g., Parus Holdings,
Inc. v. Sallie Mae Bank, ___ F.Supp. 3d ___, Civ. No. 14-1427-SLR, Civ. No.
14-1428-SLR, Civ. No. 14-1429-SLR, 2015 WL 5886179, at *3-4, *9 (D. Del. Oct.
8, 2015) (finding that the claim was directed to an abstract idea where the
defendant was able to point to "pre-internet analogs" to the patent
claims, suggesting that the claims were drawn to methods of organizing human
activity, not to a solution to problems arising in the realm of computer
technology).
After considering Defendants' proffered brick
and mortar scenario, the Court finds it to be inapplicable and thus
unpersuasive. This is so for at least two reasons.
First, as Plaintiff notes, a telephone
conversation between two individuals is not a "stateless protocol" —
at least according to the proposed construction for that term put forward by
Plaintiff. (D.I. 23, ex. K (Plaintiff's proposed construction of
"stateless protocol" as "a protocol where every request from a
client to a server is treated independently of previous connections"))
Instead, the customer and the merchant taking part in this phone call can both
use their memory to recall information that was communicated earlier in the
conversation — something that is simply not an option in computer
communications that utilize stateless protocols (such as HTTP). (D.I. 23 at 15;
Plaintiff's Presentation, Slide 52) And so the two scenarios are not really
"analogs" at all: the claimed scenario (a computer-based conversation
involving a stateless protocol) lacks something important (the ability to
retain the "state" of the conversation) that the brick-and-mortar
scenario inherently includes (the ability of the party on the receiving end of
the communication to recall the "state" of the conversation). Put
differently, the very core of the problem that claim 1 is attempting to address
— how to retain state in computer-based communications that would not otherwise
be able do so — is not necessarily even a problem at all in Defendants'
proposed brick and mortar scenario.
Second, as a practical matter, it would be hard
to describe Defendants' scenario as involving the application of a
"well-known and widely applied business practice" to the computer
realm. It is obviously possible, of course, for a merchant to repeat back all
of the information a customer has previously shared with him, each time the customer
seeks to order an additional item from the merchant. But it is hard to argue
that this is the way that humans typically communicate in the real world. If it
were, conversations lasting beyond a short period of time would become
unworkable, and merchants would have quite a few annoyed customers on their
hands. (Tr. at 112-15)
In sum, the heart of the invention is more
particular than simply "keeping track of communications" amongst
computers — it is the specific concept of recursively embedding state in
continuations, in order to keep track of that content. By oversimplifying (and
thus misidentifying) the basic character of claim 1 of the '601 patent,
Defendants have failed to meet their burden of demonstrating that the claim is
directed to an abstract idea. Cf. Symantec
Corp., 100 F. Supp.3d at 402-03 (finding the defendants' brick and mortar
hypotheticals to be "unpersuasive" and concluding that "[t]he
concept of detecting a computer virus in installed data (and doing so in a
telephone network) does not make sense outside of a computer context" and
that the defendants failed to prove the claim at issue was directed to an abstract
idea).
Alice's step two
Although it need not do so in light of its
conclusion as to step one, for the sake of completeness, the Court will next
proceed to assess the patent's eligibility under Alice's step two.
Claims of a patent drawn to an abstract idea
may still be patent eligible if they contain an "inventive concept"
sufficient to "ensure that the patent in practice amounts to significantly
more" than a patent upon the ineligible concept itself. Alice, 134 S. Ct. at 2355 (citation omitted). There is no
such "inventive concept" if a claim only recites an abstract idea
implemented using "generic" technology to "perform
well-understood, routine, and conventional activities commonly used in [the]
industry." Content Extraction, 776 F.3d at 1348. Neither "limiting the use of
an abstract idea `to a particular technological environment[,]'" nor
simply stating an abstract idea and adding the words "apply it[,]"
will transform an abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358 (citations omitted). Pursuant to
these principles, a software patent can be patent eligible under Section 101
when its claims "describe a problem and solution rooted in computer
technology, and the solution [is] (1) specific enough to preclude the risk of
preemption; and (2) innovative enough to `override the routine and
conventional' use of the computer." Intellectual Ventures I, LLC v.
Canon Inc., ___ F. Supp. 3d ___, Civ. No. 13-473-SLR, 2015 WL 6872446, at
*21 (D. Del. Nov. 9, 2015) (quoting DDR Holdings, 773 F.3d at 1258-59).
Even were the Court to assume arguendo
that Defendants are correct about the outcome at Alice's first step
(meaning that claim 1 would be found to be directed to the abstract idea of
"keeping track of prior communications during a conversation between
computers"), Plaintiff's argument that claim 1 contains an inventive
concept would be sufficient at this stage to withstand Defendants' Motion. As
the Court will explain below, it is plausible that the "recursively
embedding" limitation amounts to a concrete application of the asserted
abstract idea. A more robust record would also be needed on the subjects of
preemption and innovation, which could impact the subject matter eligibility of
the claim.
a. Claim 1 discloses
a specific solution
In their initial argument that claim 1 of the
'601 patent was devoid of an inventive concept, Defendants again appeared to
completely overlook Claim 1's "recursively embedding" limitation.
Their opening brief asserted that the claim "seeks to monopolize every
concrete application of keeping track of prior communications during a
conversation between computers[.]" (D.I. 19 at 19; see also id. at
18 (contending that claim 1 "amounts to `nothing significantly more than
an instruction to apply the abstract idea' of keeping track of prior
communications during a conversation between computers by `using some
unspecified, generic' computer hardware") (citations omitted)) But as
Plaintiff accurately retorted, the patent's specification actually details
several examples of prior art mechanisms to preserve state information such as
state-aware protocols, cookies, and HTML forms. (D.I. 23 at 17-18) It then goes
on to disclose a purportedly novel, additional way of accomplishing this goal:
the concept of recursively embedding state information in continuations. (See,
e.g., '601 patent, cols. 9:57-10:3)[9]
This disclosure sets the '601 patent apart from
other patents that have flunked step two of Alice at the pleading stage.
A helpful case to assess in this regard is the decision in Internet Patents,
which involved claims that failed both prongs of Alice. There, the
Federal Circuit concluded at step one that the invention was directed to the
abstract idea of retaining information in the navigation of online forms (i.e.,
of maintaining state). Internet Patents, 790 F.3d at 1348. At step two, the Court found no
inventive concept in the claims because they "contain[ed] no restriction
on how the result is accomplished[;] [t]he mechanism for maintaining the state
is not described, although this is stated to be the essential innovation."
Id. The patentee's proposed construction of "maintaining
state" did not help matters, as it described "the effect or result dissociated
from any method by which maintaining the state is accomplished upon the
activation of an icon." Id. (emphasis added). Thus, the Federal
Circuit concluded that the claims were patent ineligible. Id. at
1348-49. Here, in stark contrast, the '601 patent does recite a
particular mechanism for preserving state. (See Tr. at 117 (Plaintiff's
counsel distinguishing the Internet Patents decision))
By the time of oral argument, Defendants' step
two argument shifted a bit. Defendants' counsel acknowledged that the patent's
disclosure of the recursively embedding concept provides "another way to
[preserve state information]." (Id. at 125) But Defendants
contended that claim 1 fails at step two because "it doesn't really tell
you how" to recursively embed and, therefore, does not amount to
something "significantly more than [an] abstract idea." (Id.
at 122-25 (emphasis added); see also id. at 93-94)
Defendants' argument raises the question of how
much "how" must exist in a patent's claim, in order to elevate the
claim from the realm of abstraction to that of patent eligibility. In DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245
(Fed. Cir.2014), the Federal Circuit found the patent at issue to satisfy Section 101
where the claims did not simply recite the performance of a known business
practice applied to the Internet, but instead provided a solution
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." DDR Holdings, 773 F.3d at 1257. The patent disclosed a system for
generating a composite web page when a user clicked on a third-party merchant's
advertisement hyperlink that combined the visual elements of the
"host" website with the content of the third-party merchant. Id.
at 1248-49. In deeming the patent satisfactory under Section 101, the Court
cautioned that "not all claims purporting to address Internet-centric
challenges" will be eligible for patent. Id. at 1258. The Court
explained that the patent before it was eligible, however, because "the
claims at issue here specify how interactions with the Internet are
manipulated to yield a desired result — a result that overrides the routine
and conventional sequence of events ordinarily triggered by the click of a
hyperlink." Id. (emphasis added). More specifically, the claims set
out the sequence by which the claimed system directed users to a
"hybrid" web page that maintained the "look and feel" of
the host website, instead of sending the user to a completely different
third-party site. Id. at 1249, 1259. By claiming only a "specific
way" of performing the task, the claims at issue did "not attempt to
preempt every application of the idea . . . of making two web pages look the
same[.]" Id. at 1259.
When assessing whether claims contain an
inventive concept, courts have emphasized this finding of the DDR Holdings
Court. See, e.g., Source Search Techs., LLC v. Kayak Software Corp., 111
F.Supp.3d 603, 617 (D.N.J.2015) ("DDR Holdings tells us that when a
patent holder seeking to establish [Section] 101 eligibility for an otherwise
abstract idea points to a particular element of a patent's claims as solving a
computer-centric problem, the claims must specify how that solution works. That
specificity removes the claims from the abstract realm.") (emphasis in
original). An inventive concept will not be found where (unlike the claims at
issue in DDR Holdings) the claim fails to disclose how an
interaction with the Internet (or among computer systems) is manipulated.[10]
On the other hand, where claims recite specific, unconventional methods
directed to solving the problem identified by the patent, district courts have
tended to find that such patents pass muster under Alice's second step.[11]
Here, claim 1 clearly discloses, at minimum,
one level of "how," in reciting a specific solution to the patent's
identified problem. That is, claim 1 has an answer to the question "How
will the patentee preserve state in conversations between computers
communicating via stateless protocols?": by recursively embedding the
state information in continuations, such as hyperlinks. It is true that the
claim does not explicitly provide additional layers of "how." It does
not further include, for example, a set of rules dictating how exactly the
server must accomplish the "recursively embedding" step.[12]
But at this stage, the claim's clear recital of a specific way to preserve
state is a factor suggesting that it would be inappropriate to grant
Defendants' Motion. Cf. Messaging Gateway Solutions, 2015 WL 1744343, at
*3, *5-6 (finding that a method claim directed to the translation of an SMS
text message in a way that allows the computer to receive and understand the
message contained an inventive concept, where the translation limitation
recited "the computer system inserting at least a message body of the text
message into an Internet Protocol (IP) message" but did not further
specify how that translation from text message to IP message is to occur); Intellectual Ventures I, LLC v.
Motorola Mobility LLC, 81 F. Supp. 3d 356, 369 (D. Del. 2015) (finding, in resolving a post-trial
motion seeking summary judgment, that the claims of an asserted patent relating
to the allocation of wireless bandwidth based on packet contents were directed
to patent-eligible subject matter, explaining at step two that "[e]ven
though claim 1 itself does not provide a detailed explanation of how packet
headers are used to allocate the bandwidth, the inventive concept lies in the
limitation of using packet headers to allocate bandwidth, not in the details of
implementation").
Innovation and Preemption
The Court further finds that isues relating to
innovation and preemption — additional important considerations in the step two
inquiry — would need to be further fleshed out prior to a final decision on the
eligibility of claim 1.
In order to amount to an inventive concept, a
claim's limitations must "recite an invention that is not merely the
routine or conventional use of" computer technology and/or the Internet. DDR Holdings, 773 F.3d at 1259. Plaintiff asserts that the
recursively embedding limitation "[i]s a total change [from] the way the
Internet hyperlinks worked before this patent." (Tr. at 108; see also
id. at 116-17; D.I. 1 at ¶ 21 ("The inventor [of the '601 patent] . .
. . developed novel methods of recursively embedding state information into
communications between clients and servers.")) For their part, even
Defendants acknowledge that it is "arguabl[e]" that the
"rescursively embedding" limitation in claim 1 is something other
than a "conventional step[]." (Tr. at 92) Further factual development
— as to just how unconventional or innovative this solution was at the time —
might impact the Section 101 inquiry.
So too would factual development as to the
question of preemption. Defendants assert that "[p]rofound preemption
concerns are inherent because Claim 1 . . . fails to impose any significant
limitations on the implementation of the abstract idea of keeping track of a
prior communication in a conversation[,]" and "[t]he few remaining
options in the field offered by Plaintiff (using state-aware protocols, i.e.,
not HTTP, or using small files containing state information stored at the
client computer) demonstrate the over-breadth of the claim." (D.I. 25 at
11) Plaintiff, to the contrary, argues that the patent "does not
monopolize the industry in any way" — pointing to the additional methods
the patent discusses for preserving state information. (Tr. at 119)
The Supreme Court has identified "the
concern that drives th[e] exclusionary principle [set out in Section 101] as
one of pre-emption." Alice, 134 S. Ct. at 2354. The inquiry with respect to
preemption is whether the patent "would risk disproportionately tying up
the use of the underlying ideas[.]" Id. (internal quotation marks
and citation omitted). On this record, it is still an open question as to
whether: (1) the additional specific methods identified in the patent were the only
remaining options in the field for preserving state information in
conversations between a client and a server; and (2) if they were not (or even
if they were), to what extent could claim 1's content be said to tie up too
much of the use of the underlying asserted abstract idea. See, e.g., Cronos
Techs., 2015 WL 5234040, at *3 (explaining that if there are any set of
facts that could be proven relating to preemption that could render a claim
patent eligible, then a court should deny a Rule 12 motion brought on Section
101 grounds); Mirror Worlds Techs., LLC v. Apple Inc., CAUSE NO.
6-13-CV-419 (LEAD CASE), 2015 WL 6750306, at *10 (E.D. Tex. July 7, 2015)
(denying defendants' Section 101 motions for judgment on the pleadings without
prejudice because, inter alia, "the Court cannot conclude at the
pleading stage that claim 13 uses conventional and generic computer functions
to disproportionately preempt the abstract idea"). The answers to those
disputed questions could inform whether a Section 101 motion is ultimately
well-taken, all of which further militates against grant of Defendants' Motion.
(Cf. Tr. at 104 (Defendants' counsel acknowledging that there
"could be" disputed fact questions regarding the number of additional
solutions that exist for preserving state information in communications between
computers, specifically as to the significance or scope of any such alternative
solutions))
In sum, under the current procedural posture of
the case, Defendants have failed to meet their burden of demonstrating that
claim 1 of the '601 patent is patent-ineligible. The Court thus recommends that
Defendants' Motion be denied without prejudice as to this patent.