Indexed and Tagged Database Claims Are Patent Ineligible Subject Matter

The Court of Appeals for the Federal Circuit held that patent claims defining an index used to locate desired information in a computer database, wherein the database index organizes information using a series of tags (category and domain tags) and wherein each record in the database includes an index component that identifies the category and domain tags associated with that record, is an abstract idea and is ineligible patent subject matter under 35 U.S.C. section 101.  When the system receives a search request, a set of tags that corresponds to the request is somehow identified by the system. And the system uses that set of tags to search for records that have an index component identifying the same set of tags.  Intellectual Ventures I LLC v. Erie Indemnity Co., Case No. 2016-1128 (Fed. Cir. March 7, 2017) (Available Here).

To determine whether the claimed invention defines ineligible patent subject matter, the Supreme  Court has set forth a two-step inquiry. Specifically, a Court must determine: (1) whether the claim is directed to a patent-ineligible concept, i.e., a law of nature, a natural phenomenon, or an abstract idea; and if so, (2) whether the elements of the claim, considered ”both individually and ‘as an ordered combination,”‘ add enough to “‘transform the nature of the claim’ into a patent eligible application.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297-98 (2012)).

Under the “abstract idea” step the Court must evaluate “the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.”  For that step the Court ”look[s] with more specificity at what the claim elements add, in order to determine ‘whether they identify an ”inventive concept” in the application of the ineligible subject matter’ to which the claim is directed.” Id. at 1258 (quoting Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).

Claim 1 states: “A method for creating a database and an index to search the database, comprising the steps of: [a] creating the index by defining a plurality of XML tags including domain tags and category tags; [b] creating a first metafile that corresponds to a first domain tag; and [c] creating the database by providing a plurality of records, each record having an XML index component.”

“As the patent itself observes, the invention relates to ‘’locating information in a database, and … using an index that includes tags and metafiles to locate the desired information.’ This type of activity, i.e., organizing and accessing records through the creation of an index-searchable database, includes longstanding conduct that existed well before the advent of computers and the Internet. For example, a hard copy based classification system (such as library-indexing system) employs a similar concept as the one recited by the ‘434 patent.”

The Court has previously held other patent claims ineligible for reciting similar abstract concepts that merely collect, classify, or otherwise filter data. For example, in In re TLI Communications LLC Patent Litigation, the Court concluded that the concept of classifying data (an image) and storing it based on its classification is abstract under step one. 823 F.3d 607, 611 (Fed. Cir. 2016). In Content Extraction, the Court similarly held that the concept of data collection, recognition, and storage abstract as well. 776 F.3d at 1347. More recently, in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, the Court held that a claim to a “content filtering system for filtering content retrieved from an Internet computer network” was directed to an abstract idea. 827 F.3d 1341, 1348–49 (Fed. Cir. 2016). However, the claims in Bascom were found to be patent eligible subject matter under Step Two of Alice Corp.  

The Court stated: “Here, the claimed creation of an index used to search and retrieve information stored in a database is similarly abstract.”

The Patentee IV argued that the claims of the ‘434 patent are drawn to a specific search architecture that improves how computer databases function, just like the self-referential table claims at issue in Enfish, LLC v. Microsoft Corp. 822 F.3d 1327 (Fed. Cir. 2016). In support of its argument, IV relied heavily on the fact that many of the claims, including representative claim 1, were directed expressly to building an index using XML tags.

Even “if the claims were so limited, merely using XML tags-as opposed to other kinds of tags-to build an index is still abstract.”

In applying Step Two of the Alice Corp. analysis, the Court “must ‘determine whether the claims do significantly more than simply describe [the] abstract method’ and thus transform the abstract idea into patentable subject matter.”

Evaluating the claims, the Court agreed with the district court that the claims lack an ”inventive concept” that transforms the abstract idea of creating an index and using that index to search for and retrieve data into a patent-eligible application of that abstract idea. The patent admits that an index is simply “a guide that is used to locate information stored in a database.”  Also, the Court “fail[ed] to see how the patentee’s use of a well-known tag, i.e., XML tag – to form an index – sufficiently transforms the claims into a patent eligible invention… simply akin to limiting an abstract idea to one field of use or adding token post solution components.”

Another Claim 40 provides: “A system for storing and accessing user specific resources and information, the system comprising: [a] a network for accessing the user specific resources and information stored in a network server; and [b] a local device communicating with the network and having a local memory and a mobile interface, [c] wherein the local memory also includes user specific resources and information, and [d] the mobile interface includes pointers corresponding to the user specific resources and information that are stored either on the local device or the network server, [e] wherein the pointers provide links to access the corresponding user specific resources and information.

In discussing claim 40, the Court stated: “The claimed invention is directed to a ‘mobile interface’ on a user’s device that is capable of accessing the user’s data stored anywhere, whether on the user’s device or elsewhere on a remote network server.”  Patentee IV placed great emphasis on the claims’ recitation of a mobile interface and its associated pointers. IV argued that the ‘002 patent overrides the routine use of pointers, e.g., in the context of a local system, by intelligently accessing and combining them through the mobile interface to retrieve remotely-stored data.

The Court stated that the “recited use of a mobile interface and pointers to retrieve user information evidences nothing more than a ‘generic computer implementation’ of the abstract idea that is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice Corp, 134 S. Ct. at 2357.

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