Claims reciting a “method of playing back a recorded signal” are “directed to the [patent-ineligible] abstract idea of choosing to playback media with or without playback preferences,” held the court in D&M Holdings, Inc. v. Sonos, Inc., No. 16-141-RGA (D. Del. Feb 16, 2018). The court thus granted summary judgment of invalidity under 35 U.S.C. § 101 of U.S. Patent No. 7,995,899.
Claim 1 of the ’899 patent recites:
1. A method of playing back a recorded signal, comprising:
obtaining a recording identifier corresponding to the recorded signal; comparing
the recording identifier with previously stored identifiers in a playback preference database; and
reproducing the recorded signal using previously stored preferences if the recording identifier is found in the playback preference database and using default preferences if the recording identifier is not found in the playback preference database.
Evaluating the claim under the two-part Alice test, the court agreed with the defendant’s argument “that claim 1 is ‘directed to the well-known practice of choosing to [play back] media (e.g., a DVD movie) with or without playback preferences (e.g., volume level, surround sound mode, the viewing angle, etc.), which can be (and was previously) performed entirely by a human.’” The plaintiffs’ argument that the claims were saved by being “limited to a specific technological field” was to no avail; under Alice, the court explained, it is irrelevant “that the claims are directed to a particular technological environment.”
Moreover, the court was not persuaded by the plaintiffs’ argument that the recitation to use preferences would include the disclosed feature of controlling “surround sound,” which in turn would require controlling multiple network devices. Not only was this feature not in the claims, but surround sound settings were no different from volume settings in that a human could set them manually. The court rejected the plaintiffs’ attempt to distinguish the instant claims from the ineligible claims directed to scanning and storing information in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n., 776 F.3d 1343 (Fed. Cir. 2014), and agreed that claim 1 “is, at most, directed to the automation of a process that can be (and has been) performed by humans.”
After explaining that claims depending from claim 1 were also directed to an abstract idea, the court considered step two of the Alice test, whether an “inventive concept” made the abstract idea patent-eligible. The plaintiffs argued that the claims required and “user interface” that was “evidence of an inventive concept.” But the claims did not cover a user interface; it was easy for the court to agree with the defendant that the claims simply automated the recited “abstract idea through the use of a generic, conventional technology.”
Finally, the court acknowledged the issue of whether patent-eligibility analysis involves fact questions, raised by the Federal Circuit’s recent statements in Berkheimer v. HP, Inc. (See also the even more recent case of Aatrix Software, Inc. v. Green Shades Software, Inc.) Here, there was no “sophisticated computer programming” or complex inventive concept to understand, and thus no genuine dispute of material fact preventing summary judgment.
Lessons for Practice
The claims at issue in this case were short and broad. At the risk of oversimplifying jurisprudence under 35 USC § 101, very broad claims are always suspect. Although the court dismissed a prior art invalidity challenge as moot in light of its holding of Section 101 invalidity, it seems relevant that claim 1 certainly seems kind of obvious on its face. As the court here noted, it is not enough to locate claims in a technical environment; when drafting claims, consider whether you have included limitations that (a) cannot be said to have a manual analog, and (b) arguably recite an improvement to the technical environment as opposed to mere automation of a manual process.