One Case, Two Section 101 Patent-Eligibility Results

One patent was held to recite ineligible subject matter under 35 U.S.C. § 101, and a second patent was held eligible, in Intellectual Ventures I, LLC v. Motorola Mobility LLC, No. 11-908-SLR (D. Del. Feb 24, 2015). This result provides guidance for all involved in patent eligibility questions but may be particularly useful, I think, for certain patent owners and applicants looking to distinguish their claims from the raft of claims held unpatentable under Section 101 in recent months.

The court considered the patent-eligibility of two of six patents-in-suit as part of Motorola’s summary judgment motion, renewed after a jury trial resulted in a hung jury. U.S. 6,557,054, held patent-ineligible, recited “[a] computer implemented method for distributing software updates from a remote computer system to a user station.” U.S. 7,409,450, held patent-eligible, included claims directed to “coupling one or more subscriber customer premise equipment (CPE) stations with a base station over a shared wireless bandwidth using a packet-centric protocol; and allocating the wireless bandwidth and system resources based on contents of packets.”

Judge Robinson’s analysis of the ’054 patent began with a chart having a first column listing the three claim limitations of an exemplary independent claim, and a second column explaining how each of the limitations could be performed without a computer. Even though the ’054 patent claims did not “recite a mathematical algorithm or a fundamental economic or long-standing economic practice,” the court nonetheless found that the claims “recite nothing more than an abstraction with ‘no particular concrete or tangible form.’” Thus, the court concluded “that the claims are directed to the abstract idea of distributing software updates to a computer.”

Further, there was no inventive concept adding significantly more to the abstract idea. Intellectual Ventures (the plaintiff) had argued “that the very fact that the invention may be used on most computers ‘is one of the reasons why the ’054 patent claims are inventive.’” The court rejected this argument because Intellectual Ventures did not “identify any language in the claims or the specification demonstrating that the generic computer components function in an unconventional manner or employee sufficiently specific programming.” Judge Robinson explicitly distinguished the Federal Circuit’s recent upholding of patent claims in DDR Holdings, LLC v. Hotels.Com, L.P., explaining that in this case, “instead of overriding a routine sequence of events, the claims apply conventional computer processes to automate the delivery of software updates.”

In contrast, the court thought that the claims of the ’450 patent were patent-eligible based on a comparison to the claims in DDR Holdings. Claim 1 of the ’450 patent recites:

A method comprising:

coupling one or more subscriber customer premise equipment (CPE) stations with a base station over a shared wireless bandwidth using a packet-centric protocol; and

allocating said wireless bandwidth and system resources based on contents of packets to be communicated over said wireless bandwidth, wherein the contents of each packet include a packet header and wherein the allocating is responsive to at least one field in the packet header.

There was no “dispute that bandwidth and packet themselves are not patentable subject matter.” However, the ’450 patent distinguished its claims “from prior art ‘circuit-centric’ architecture,” and described a specific advantage of this distinction. This distinction was supported by expert testimony. Therefore, the claims here were like the claims in DDR Holdings, that is, “necessarily rooted in computer technology” and solving a “problem specifically arising in the realm of computer networks.” Specifically, “the inventive concept lies in the limitation of using packet headers to allocate bandwidth, not in the details of implementation.”

In short, this case illustrates how a patent owner or applicant who can show a technical improvement or advantage not found in the prior art may survive a patent-eligibility challenge under 35 U.S.C. § 101. At the same time, claims reciting steps that could be practiced manually continue to face stiff patent-eligibility challenges.

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