What Makes Claims Patent Eligible? “Significantly More” Explained
On August 15, 2014, the Federal Circuit decided the appeal in I/P Engine, Inc. v. AOL Inc., et al., case No. 11-CV-0512 from the Eastern District of Virginia and gives guidance on claim drafting in the computer arts.
At trial, I/P Engine brought an action against AOL Inc., Google Inc., IAC Search & Media, Inc., Gannett Company, Inc., and Target Corporation alleging infringement of U.S. Patent Nos. 6,314,420 and 6,775,664. A jury returned a verdict finding that all asserted claims were infringed. Claim 26 of the ‘664 patent is illustrative of all claims at issue:
26.A method for obtaining information relevant to a first user comprising:
searching for information relevant to a query associated with a first user in a plurality of users;
receiving information found to be relevant to the query by other users;
combining the information found to be relevant to the query by other users with the searched information; and
content-based filtering the combined information for relevance to at least one of the query and the first user.
The Federal Circuit in this opinion reverses and rejects the claims as obvious in its de novo review of the patent claims. Obviousness is a purely legal question. On p. 8 of the opinion, the court states that “no reasonable jury could conclude otherwise,” and that therefore the ‘420 and ‘664 patents must be held to be obvious. The court finds that the claims of ‘420 and ‘664 patents merely recite a combination of “content-based and collaborative filtering,” two well-known Internet search techniques known at the time that the patent applications were filed. Accordingly, the prior art, viewed as a whole, renders the asserted claims obvious. Op. at pp. 9-10.
Judge Mayer entered a concurring opinion in which he discusses what claim limitations could qualify to meet the “significantly more” standard first mentioned in Alice Corp. (Alice Corporation, v. CLS Bank Int’l, 573 U.S. ___, 134 S. Ct. 2347, 2359 (2014)) to ensure claims express patent eligible subject matter consistent with today’s interpretation of 35 U.S.C. § 101. He states that difficult cases include those “where it is uncertain whether the claims are sufficiently ‘technological’ to warrant patent protection.” In these types of cases, subject matter eligibility “will often turn on whether the claims describe a narrow inventive application of a scientific principle, or instead simply recite steps that are necessarily part of the principle itself.” See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012). He gives a bit of judicial history about the “technological question” that can help a court decide which claims should survive a 101 challenge.
Judge Mayer notes the need for specificity “is particularly acute in the software arena, where claims tend to be exceedingly broad, development proceeds at breakneck speed, and innovation often occurs despite the availability of patent protection rather than because of it.” He states, “most importantly, the technological arts test recognizes that there has to be some rough correlation between” the extent of patent monopoly granted to the inventors and the amount of knowledge gained by society. Applicants “who make little, if any, substantive contribution to the existing body of scientific and technological knowledge should not be afforded broad monopoly rights that potentially stifle future research and development.” Sounds like a policy argument for strengthening the 101 inquiry.
In this case, according to Judge Mayer, the I/P Engine patent claims fail the test for patentable subject matter. The “asserted claims simply describe the well-known and widely-applied concept that it is often helpful to have both content-based and collaborative information” about an area of interest. The “complexity of the implementing software or the level of detail in the specification does not transform a claim reciting only an abstract concept into a patent-eligible system or method.” See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013). The claimed system of I/P Engine is “merely an Internet iteration of the basic concept of combining content and collaborative data.” It merely relies for implementation on “a generic computer to perform generic computer functions.” Judge Mayer cites to the record and notes an analogy for these claims: A person who plans “to visit London, for example, might consult a guidebook that would provide information about particular museums in London (content data) as well as information about what other people thought of these museums (collaborative data).” The claims of the patents at issue appear to be nothing more than this.
Judge Mayer continues, “the scope of the claimed invention is staggering, potentially covering a significant portion of all online advertising . . . I/P Engine’s asserted claims fall outside section 101 because their broad and sweeping reach is vastly disproportionate to their minimal technological disclosure.”
The Supreme Court has dictated that the subject matter eligibility analysis must precede the obviousness inquiry. In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (“Only if the requirements of § 101 are satisfied is the requirements for patentability, such as novelty under § 102 and . . . non-obviousness under § 103;” citing to Parker v. Flook, 437 U.S. 584, 593 (1978)). Judge Mayer takes a practical perspective and states, “there are clear advantages to addressing section 101’s requirements at the outset of litigation,” so as to “spare both litigants and courts years of needless litigation.”
Accordingly, Judge Mayer would add a robust Constitutional requirement that patent claims must recite “something more” than what is already known in the art combined with an ordinary computer. This is a warning to patent claim drafters and litigators that courts are not ignorant that patents should “promote . . . rather than . . . [impede] scientific progress and technological innovation,” as indicated by Judge Mayer in his dissent.