Fed. Cir.: Claims to Selecting Data Files Patent-Ineligible

Claims of a patent owned by Intellectual Ventures and directed to “identifying and characterizing stored electronic files” are patent-ineligible under 35 USC § 101 and the Alice abstract idea test, said the Federal Circuit in Intellectual Ventures I LLC v. Erie Indemnity Corp., No. 2017-1147 (Fed. Cir. Nov. 3, 2017) (non-precedential). The court thus affirmed a district court’s Rule 12(b)(6) dismissal of Intellectual Ventures’ claim that U.S. Patent No. 7,757,298 was infringed. Writing for a unanimous panel that included Chief Judge Prost and Judge Reyna, Judge Wallach agreed with the district court that the claims were directed to the abstract idea of “identifying and categorizing illicit files, the possession of which might subject an individual or organization to liability.”

Representative claim 1 of the ’298 patent recites:

A computer-implemented method for identifying and characterizing stored electronic files, said method comprising:

under control of one or more configured computer systems:

selecting a file from a plurality of files stored in a computer storage medium, wherein selecting the file is performed according to at least one of:

selecting the file based on the size of the file by determining whether an aggregate size of plural identically-sized files exceeds a predetermined threshold;

selecting the file based on whether content of the file matches a file type indicated by a name of the file; or

selecting the file based on whether the file comprises data beyond an end of data marker for the file;

generating an identification value associated with the selected file, wherein the identification value is representative of at least a portion of the content of the selected file;

comparing the generated identification value to one or more identification values associated with one or more of a plurality of unauthorized files; and

characterizing the file as an unauthorized file if the identification value matches one of the plurality of identification values associated with the unauthorized files.

This claim simply recited identifying data or “otherwise concern[ed] data collection related to such identification” such that Federal Circuit precedent required a conclusion that the claim recited an abstract idea. In particular, the court cited Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016) and Intellectual Ventures I LLC v. Capital One Financial Corp. (Fed. Cir. 2017) for the proposition that claims drawn to manipulating data are drawn to an abstract idea.

Unfortunately for Intellectual Ventures, the ’298 patent specification “repeatedly notes that selection of errant files generally could be performed by humans.”  Intellectual Ventures argued unsuccessfully that “selecting the file based on whether the file comprises data beyond an end of data marker for the file” could not be manually performed, and demonstrated that the claims were not drawn to an abstract idea. Not so, said the court, because the claims as a whole were drawn to the concept of ferreting out errant files.

Moreover, Intellectual Ventures’ attempts to analogize to McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016) and Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016) met with failure. In those cases, patent claims recited improved efficiencies in machines. Here, in contrast, the ’298 patent claims “merely implement an old practice in a new environment.”  The court noted that “IV has not argued that the claimed processes of selecting errant files apply rules of selection in a manner different from those which humans used, albeit with less efficiency, before the invention was claimed.”

As an interesting side note, Intellectual Ventures’ made an argument that source code attached to the patent application evidenced the patent-eligibility of claim recitations of performing a checksum. The court did not dismiss this argument on the merits, but rather ignored it because the argument did not pertain to claim 1, which Intellectual Ventures had not disputed was representative.

Turning to the second prong of the Alice/Mayo test, the search for an “inventive concept,” the court’s analysis will seem very familiar. The claims simply recited generic computing technology. Whether the claims recited novel subject matter was irrelevant to the question of patent-eligibility (which despite some decisions to the contrary, and even if difficult in practical application, certainly seems to be a settled statement of law). And finally, Intellectual Ventures’ argument that the machine-or-transformation test “suggests” patent eligibility was of no avail. That test was only a guide, and in any event, the only machine here was generic computing technology.

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Functional Claiming After Williamson v. Citrix
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