In companion cases decided the same day, the Federal Circuit has held invalid, as failing the patent-eligibility requirements of the Alice case and 35 U.S.C. § 101, claims of three patents owned by Intellectual Ventures, two of which are directed to dynamically managing XML (eXtensible Markup Language) documents; the remaining patent being directed to retrieving data on a mobile device. Opinions in both of these cases, authored by Chief Judge Prost, joined by Judges Wallach and Chen, were designated as precedential:
- Intellectual Ventures I LLC v. Erie Indemnity Co., Nos. 2016-1128 and 2016-1132 (Fed. Cir. March 7, 2016), affirmed a finding from the Western District of Pennsylvania that U.S. Patent Nos. 6,510,434 and 6,546,002 were “ineligible under 35 U.S.C. § 101.” The court also vacating a finding of patent-ineligibility of U.S. Patent No. 6,519,581 because of a lack of standing, but this issue is beyond the scope of this post.
- Intellectual Ventures I LLC v. Capital One Financial Corp., No. 2016-1077 (March 7, 2016), affirmed lower court findings of patent-ineligibility of U.S. Patent No. 7,984,081, and, relying on its opinion in the above companion case, the ’002 patent. The court also addressed an issue of collateral estoppel concerning U.S. Patent No. 6,715,084, which again is beyond the scope of this post.
Representative claim 21 of the ’081 patent, which the court characterized as, “in short,” directed to “editing XML documents,” recites:
An apparatus for manipulating XML documents, comprising:
a component that organizes data components of one or more XML documents into data objects;
a component that identifies a plurality of primary record types for the XML documents;
a component that maps the data components of each data object to one of the plurality of primary record types;
a component that organizes the instances of the plurality of primary record types into a hierarchy to form a management record type;
a component that defines a dynamic document for display of an instance of a management record type through a user interface; and
a component that detects modification of the data in the dynamic document via the user interface, and in response thereto modifies a data component in an XML document.
The court’s reading of the claim was that, “[s]tripped of excess verbiage,” the claim allowed a user to modify a dynamic document generated by classifying data from an underlying XML document into different “record types.” After the user changed the dynamic document, the court explained, “the system somehow modified the underlying XML document.”
The court then “conclude[d] that the patent claims are, at their core, directed to the abstract idea of collecting, displaying, and manipulating data.” IV argued that the patent was limited to XML documents and to data structures in the XML document, but “at best, this limits the invention to a technological environment for which to apply the underlying abstract concept.” Further, turning to the second prong of the Mayo/Alice test – do the claims recite significantly more than the abstract idea – the Court found that these claims did not. True, the claim were limited to XML documents, but they recited only generic programming and computer technology, at most “only a result-oriented solution, with insufficient detail for how a computer accomplishes it.”
Claims 1 and 19 of the ’434 patent were considered as exemplary; claim 1 recites:
A method for creating a database and an index to search the database, comprising the steps of:
creating the index by defining a plurality of XML tags including domain tags and category tags;
creating a first metafile that corresponds to a first domain tag;
and creating the database by providing a plurality of records, each record having an XML index component.
Starting with step one of the Mayo/Alice test, the Federal Circuit “agree[d] with the district court that the invention is drawn to the abstract idea of ‘creating an index and using that index to search for and retrieve data.’” The recited tags were simply used for organizational purposes just like books could be identified in a library by title, author, and subject. IV tried to rely on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), to argue that the ’434 patent claims were not directed to an abstract idea but were “drawn to a specific architecture that improves how computer databases function.” The court disagreed; not all of the claims recited XML tags, and the patent included a statement that “the invention is not necessarily limited to XML language.” And in any event, even if limited to XML, using tags “to build an index is still abstract.”
The Federal Circuit also agreed with the district court that, under step two of the Mayo/Alice test, the claims lacked a sufficient inventive concept to render the abstract idea patent-eligible. The court could not “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.”
And now we come to the patent that was not directed to an XML-related invention. Claim 40 was considered as representative of the 49 claims of the ’002 patent:
A system for storing and accessing user specific resources and information, the system comprising:
a network for accessing the user specific resources and information stored in a network server;
and a local device communicating with the network and having a local memory and a mobile interface, wherein the local memory also includes user specific resources and information, and the mobile interface includes pointers corresponding to the user specific resources and information that are stored either on the local device or the networkserver, wherein the pointers provide links to access the corresponding user specific resources and information.
The Federal Circuit began by stating its agreement with the district court that the ’002 patent “invention is drawn to the idea of ‘remotely accessing user specific information.’” Despite IV’s arguments to the contrary, the claims do “not recite any particular unique delivery of information through [the recited] mobile interface.” At most, the claim included a limitation to a field of use or technological environment, and the law clearly establishes that such does not make a claim non-abstract or patent-eligible.
Under the second prong of the Mayo/Alice test, IV argued that the claims recited “significantly more” than an abstract idea with their “recitation of a mobile interface and its associated pointers.” The court rejected this argument, finding these recitations to be simply generic computing technology. Rather than providing “an inventive solution to a problem in implementing the idea of retrieving user-specified information,” the patent simply recited implementing its abstract idea using conventional technology. The patents identified a need, but did not give enough implementation details “to provide a concrete solution to address that need.”
These cases reinforce a number of lessons for claim drafters:
- Consider clearly stating a problem being solved in your specification, and then describe a solution to that problem in specific technical terms as much as possible;
- When claiming functionality or results, which is often impossible to avoid in software claims, include as much detail as you can about how the functionality or results are achieved; and
- In many cases you should not be afraid to limit your disclosure and claims to a particular technological environment – while this by itself is clearly not enough to support patent-eligibility, further claiming specific details about steps undertaken in that technological environment that solve a specific problem and do not have applicability elsewhere may be a significant additional innovation under the Mayo/Alice test.