Neither Technical Terms Nor Length Save Claims under Alice

Patent claims directed to “buying and selling an item relating to unique subjects” were held patent-ineligible under the Alice abstract idea test and 35 USC § 101 in VOIT Technologies, LLC  v. Del-Ton, Inc., No. 5:17-CV-259-BO, (E.D. N.C. Jan. 10, 2018).  The court therefore granted a motion to dismiss under FRCP 12(b)(6).  Among the interesting aspects of this case are that U.S. Patent No. 6,226,412 includes a 330 word independent claim, and that claim includes a lot of technical terminology relating to storing and processing text and image data.  Neither of these things saved the claim from Alice.

The ’412 patent is directed to “secure interactive communication of text and image information between a central server computer and one or more client computers located at remote sites for the purpose of storing and retrieving files describing unique products, services or individuals.”  Claim 1, reproduced at the bottom of this post, recites numerous steps for achieving this secure interactive communication relating to unique products.

After first explaining that claim construction was not necessary to consider the question of patent-eligibility, the court turned to the question of whether the ’412 patent claimed an abstract idea. The court provided the following assessment:

Plaintiffs patent describes the idea of transmitting compressed images from one computer to another in order to facilitate the buying and selling of goods. But plaintiff was unable to articulate at the hearing, and does not attempt to do so in its briefing, what it is that it has actually invented. Instead, the patent strings together a description of things that already existed, and calls that series of steps patent-eligible. It is not.

Instead, the patent claims simply recited known techniques for image compression in combination with “the idea of using these concepts to sell products.” Citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016), ironically a case in which claims were found patent-eligible, the court explained that the ’412 patent simply recited an “abstract idea for which computers are invoked merely as a tool.”

Under step two of the Alice test, there was no inventive concept to overcome the patent-ineligible abstract idea. The court’s analysis, including a look at the old machine-or-transformation test, which the court acknowledged was no longer “dispositive,” boiled down to an assessment that the ’412 patent claims merely recited a technical environment, but no inventive or unconventional concept within that technical environment.

Lessons for Practice

The independent claim of the leading 412 patent here is similar in length to the claim that, on the third go-round, the Federal Circuit struck down in Ultramercial, Inc. v. Hulu, LLC, in November 2014. The claims here recited more details of a technical environment than claims of US 7,346,545, at issue in Ultramercial, but the basic lesson is consistent. Just because your claim is long and detailed, and just because it recites many aspects of a technical environment, does not mean that the claim will be found patent-eligible.

Claim 1 of the ’412 Patent

A method of buying and selling an item relating to unique subjects, comprising the steps of:

a. providing at least one uniquely identifiable remote data terminal, for communicating with a central computer managing a relational database for a transaction between a buyer and a seller;

b. entering the following at the at least one data terminals:

textual information descriptive of a subject in a structured fashion, including modifiable and non-modifiable data fields, and image information representative of the subject;

c. data-compressing the image data into a first image format;

d. separately transferring the textual and image data in the first format to the central computer by batch upload, the following steps being performed at the location of the central computer;

determining which remote data terminals are authorized to transmit subject oriented textual and image data, and storing information relating thereto;

receiving textual and image data from an authorized remote data terminal;

creating a first set of unique records identifying the textual information associated with teach subject received from each remote data terminal;

creating a second set of unique records identifying the image data associated with each subject received from each remote data terminal;

storing the image data separately from the textual information in a data-compressed second image format;

storing the textual information separately from the image data in relational form, along with information identifying the location of the separately stored image data corresponding thereto;

receiving subject-related requests relating to the transaction from at least one of the remote data terminals;

locating textual information corresponding to the subject-related requests relating to the transaction when requested;

transmitting the located textual information to the requesting remote data terminal; and

locating subject-related image data in response to the request when requested;

transmitting the related image data in a second data-compressed format;

e. de-compressing the images in the second data compressed format at the requesting remote data terminal; and

f. displaying the de-compressed images along with textual information at the requesting remote data terminal.

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