In the continuing search by the Court of Appeals for the Federal Circuit (“Federal Circuit”) for what is and what is not patentable eligible computer program subject matter, the Appeals Court affirmed a District Court’s order dismissing plaintiff Internet Patents’ patent infringement action because the computer method claims, computer system claims and computer readable storage medium claims are patent ineligible subject matter that lacked inventive concept. Internet Patents Corp. v . Active Network, Inc., Case No. 2014-1048 (Fed. Cir. June 23, 2015) (Available Here).
The trial court dismissed Internet Patents’ complaint applying 35 U.S.C. Section 101 and, while the Internet Patents’ appeal was pending, the Supreme Court decided Alice Corp. V. CLS Bank International, 134 S. Ct. 2347 (2014). The District Court had found that the subject patent claims employed the use of a conventional web browser Back and Forward navigational functionalities without data loss in an online application consisting of dynamically generated webpages. The Federal Circuit twice identified that the District Court made a finding that the patent specification only set forth an abstract idea of a known technological process (the Back and Forward activity of the browser) without setting forth any specific disclosure of the manner in which the dynamically generated webpage forms were created. The patent specification added no elements or combination of elements, sometimes referred to as an “inventive concept,” sufficient to ensure that the patent in practice amounts to significantly more than a patent upon a natural law or the abstract idea. Mayo Collaborative Serus. V. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
The relatively detailed Internet Patents’ claim is set forth below.
A method of providing an intelligent user interface to an online application comprising the steps of:
[1] furnishing a plurality of icons on a web page displayed to a user of a web browser, wherein each of said icons is a hyperlink to a dynamically generated online application form set, and wherein said web browser comprises Back and Forward navigation functionalities;
[2] displaying said dynamically generated online application form set in response to the activation of said hyperlink, wherein said dynamically generated online application form set comprises a state determined by at least one user input; and
[3] maintaining said state upon the activation of another of said icons, wherein said maintaining allows use of said Back and Forward navigation functionalities without loss of said state.
Internet Patents argued that the invention was not an abstract idea but a tangible and useful improvement over prior art computer implemented methods of entering information into online application forms. Internet Patents also argued that the “maintaining state” claim limitation removed the claims from abstraction. Further, Internet Patents argued that the method is a technological advance over the prior art.
The Federal Circuit, following Mayo, applied the two-step methodology to determine patent eligible subject matter. First, the court should determine whether the claims at issue are directed to one of the patent ineligible concepts. If so, the court should then review each element in the claim, both individually and as an orderly combination as set forth in the claim, and then determine whether these additional claim limitations/elements transform the nature of the claim into a patent eligible application. See Mayo. The Federal Circuit and the Supreme Court described this second step 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.” See Alice and Mayo.
The Federal Circuit then summarized various patent ineligible subject matters. In Mayo, the excluded subject matter was a law of nature, namely concentration of certain metabolics in the blood and the likelihood that a certain drug would prove ineffective or cause harm. In Alice, the Supreme Court held that the known practice of reducing financial risk by passing funds through a third-party intermediary was an abstract idea. “Although computer capability achieved financial activity of a scope not previously available, no inventive concept was found in the claims for the computer functions are well understood, routine, conventional activities previously known to the industry.” In Bilski v. Kappos, 561 U.S. 593 (2010), the conventional idea was based on the use of computers to conduct known forms of financial transactions.
The Federal Circuit recognized that “it is not always easy to determine the boundary between abstraction and patent eligible subject matter.” The Appeals Court then reviewed CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) indicating that the abstract concept of detecting credit card fraud based on past transactions preempted all uses of the abstract idea and was not patent eligible; Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) wherein a computer aided mental process of unlimited scope preempted the idea of selectively forwarding credit data to the user; Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) wherein the abstract idea of generating tasks based on rules on the occurrence of an event was not patent eligible because it preempted all practical uses of the abstract concept; and Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) wherein combining two data sets into a device profile was so abstract and sweeping as to cover all uses of a device profile. See also Gottschalk v. Benson, 409 U.S. 63, 68 (1972) declaring a binary conversion process as an abstract, patent ineligible process.
“Courts have found guidance in deciding whether the allegedly abstract idea (or other excluded category) is indeed known, conventional, and routine, or contains an inventive concept, by drawing on the rules of patentability.” The Appellate Court then agreed with the U.S. District Court that the use of a conventional web browser Back and Forward navigational functionalities without data loss in an online application consisting of dynamically generated webpages is an in eligible abstract idea. Regarding Internet Patents’ argument that “maintaining state,” was the critical tangible feature or inventive concept, the Federal Circuit pointed to the patent specification which only generally described the “maintaining state” function without any details of how that function was carried out.
Importantly in Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the Court observed that claim construction is not an inviolable prerequisite to a validity termination under section 101. However, the threshold of section 101 must be crossed, an event often dependent upon the scope and meaning of the claims. The Federal Circuit then again looked at the patent specification and found that there was no mechanism for “maintaining the state” adequately described in the patent specification. “The [district] court concluded that the claim is directed to the idea itself – – the abstract idea of avoiding loss of data” therefore, the interpretation of “maintaining state” argued by Internet Patents was not supported by the evidence.
The Federal Circuit easily dismissed the other independent claims for a computer system and a computer readable storage medium as falling within the same ineligible patent category as the computer method claims. Dependent claims, which discussed certain template files and database conditional merge files. were also discarded as not adding an inventive concept “for they represent merely generic data collection steps or siting the ineligible concept in a particular technological environment.”
The search for clarity regarding what is and what is not an “inventive concept” continues and patent owners and applicants cannot easily ascertain what is and is not patent eligible subject matter for computer programs.
