Message Publishing System Patent Invalid as Having Ineligible Patent Subject Matter

The Court of Appeals for the Federal Circuit upheld the district court’s decision that EasyWeb’s patent claims on a message publishing system defined ineligible patent subject matter under 35 U.S.C. § 101 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). The EasyWeb patents sought to address the problem of publishing messages on the Internet with a message publishing system that accepts messages in multiple ways, such as by fax, telephone, or email, verifies the message was sent by an authorized sender, and converts and publishes the message on the Internet. The claims were held invalid as defining ineligible patent subject matter. Easyweb Innovations, LLC v. Twitter, Inc., Case No. 2016-2066 (Fed. Cir., May 12, 2017) (Available Here).

According EasyWeb, ”publishing a message on the Internet [was] a daunting task” because of cost, limitations in existing software, and a lack of technical knowledge. The patents sought to address this problem by purportedly inventing a message publishing system that accepts messages in multiple ways, such as by fax, telephone, or email, verifies the message was sent by an authorized sender, and converts and publishes the message on the Internet.

Claim 1 reads: A message publishing system (MPS) operative to process a message from a sender in a first format, comprising: [a] a central processor; [b] at least one sender account; [c] at least one storage area configured to store at least a first portion of the message; and [d] software executing in the central processor to configure the processor so as to: [i] identify the sender of the message as an authorized sender based on information associated with the message in comparison to data in the sender account, wherein the identification is dependent upon the first format; [ii] convert at least a second portion of the message from the first format to a second format; and [iii] publish the converted second portion of the message so as to be viewable in the second format only if the sender has been identified as an authorized sender.

The Patent Act, 35 U.S.C. § 101, provides that “[w]hoever 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,” but judicial decisions hold that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013).

To determine whether or not a patent claim defines ineligible patent subject matter, a two step analysis is applied. “First, we must ‘determine whether the claims at issue are directed to a patent-ineligible concept.’ Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). Second, if the claims are directed to patent ineligible subject matter, we must ‘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.’ Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1298 (2012)).”

The Federal Circuit stated that claim 1 “merely recites the familiar concepts of receiving, authenticating, and publishing data. As we have explained in a number of cases, claims involving data collection, analysis, and publication are directed to an abstract idea. Does not recite an improvement to a particular computer technology.” See, for example, McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). “As such, claim 1 is directed to the abstract idea of receiving, authenticating, and publishing data.”

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