Patent claims covering parsing and classifying data packets are not patent-eligible, according to the court in Compression Technology Solutions, LLC v. EMC Corp., No. C-12-01746 RMW (N.D. Cal. May 29, 2013).
Claim 9 of U.S. Patent No. 5,414,650 is a representative method claim:
9. An information processing method for processing an information stream comprising input packets, said method comprising
receiving said information stream and receiving an indication of the boundaries in said information stream for each of said input packets,
classifying said input packets according to intrinsic characteristics of said input packets or transitions in quantitative characteristics of two or more of said input packets, and
parsing said input packets into output packets in response to said classifying, and generating an indication of the boundaries of said output packets, wherein each of said output packets comprises or represents one or more of said input packets.
Apparatus claims including means plus function elements were also held patent-ineligible as well as invalid under 35 U.S.C. § 112(f), the court explaining that these claims had “no corresponding structure for the means limitations claimed.”
The court began its analysis by rejecting the plaintiff’s argument that claim construction was required before the court could consider validity under 35 U.S.C. § 101. The court responded by noting that both Federal Circuit and district court precedent allowed for consideration of patent eligibility as a threshold issue prior to claim construction. Further, for purposes of the defendant’s summary judgment motion, the court simply accepted the plaintiff’s proposed claim constructions, even though the plaintiff’s “assertion that proper claim construction would limit the claimed inventions to processing digital data seems questionable.”
The defendants argued that the claims of the ‘650 patent failed the “abstract idea” test promulgated by the Supreme Court. The court resoundingly agreed, concluding that “[t]he ‘650 patent is no more than an abstract idea: all of the claimed limitations can be performed as mental processes; it is more abstract than other patents the Federal Circuit has found impermissibly abstract; and it is so broad that it would inappropriately limit future innovation.”
Even if the patent was limited to digital data, as the plaintiff contended, the parsing described in the patent could nonetheless be performed with a pencil and paper. The claims were thus directed to pure mental processes. Further, the court thought that claims here were broader than claims in cases such as Bilski v. Kappos and other cases where the claims were limited to specific markets. Moreover, even if the “claims are limited to storage media and digital data, these are still general structures of a computer and do not rise to the level of specificity of the data structures [held patentable by the Federal Circuit] in Research Corp.” And even with such a limitation, the claims “would still broadly cover almost all information processing associated with compression, storage, and transmission of digital information” and had no “limitations that would prevent the patent from including unknown future uses.”
The “useful, but not dispositive machine-or-transformation test” could not save the ‘650 patent claims. Simply because claims are performed by a computer is not enough to give patentable weight. The “claims require nothing more than a general-purpose computer that speeds the calculations, which as numerous courts have ruled does not meaningfully limit the scope of its claims.” A computer here did not “play a significant part in permitting the claimed method to be performed rather than being a means to perform the claims more quickly.” The claims here were fatally similar to the claims in Gottschalk v. Benson.
The court concluded by explaining that the means-plus-function limitations in the apparatus claim lacked the corresponding structure required by 35 U.S.C. § 112(f). Here, the plaintiff pointed to parsing rules set forth in the specification as allegedly being “classification means” and “parsing means,” but the plaintiff’s infringement contentions “suggest[ed] that a general purpose processor is the corresponding means.” Further, “[a] general purpose computer must be programmed with a specific algorithm to satisfy the corresponding structure requirement.” Therefore, “Claims 2 and 3 are thus invalid under section 112(f) [also] for failing to have the required corresponding structure for the means limitations.”
