A summary judgment motion alleging that claims of U.S. Patent No. 5,446,747 do not recite patent-eligible subject matter has been denied in France Telecom S.A. v. Marvell Semiconductor, Inc., No. 12-cv-04967-WHO (ND Cal. April 14, 2014). The claims at issue were directed to coding and decoding digital data.
In resolving § 101 issues following the “integrated approach” set forth in CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269 (Fed. Cir. 2013) (en banc), the court must consider whether the claimed invention fits within one of the four statutory classes set forth in the statute. If so, the court must review whether one of the judicial exceptions (law of nature, abstract idea, natural phenomenon) applies. Software-based patent claims typically involve the abstract idea exception. A patent claim that preempts an abstract idea as a whole is not eligible for patent protection.
The court noted the “integrated approach” is not the only test for resolving § 101 issues laid out in CLS Bank. Three Federal Circuit judges, including Chief Judge Rader, prefer the “meaningful limitations” test. The court in France Telecom, however, decided to apply the “integrated approach” since more Federal Circuit judges were persuaded to apply that test in CLS Bank. Nevertheless, Judge Orrick stated in a footnote that claims 1 and 10 would survive a patent eligibility challenge under either test.
The two claims at issue were claims 1 and 10 of the ‘747 patent. Claim 1 recites:
1. A method for error-correction coding of source digital data elements, comprising the steps of:
implementing at least two independent and parallel steps of systematic convolutional coding, each of said coding steps taking account of all of said source data elements and providing parallel outputs of distinct series of coded data elements;
and temporally interleaving said source data elements to modify the order in which said source data elements are taken into account for at least one of said coding steps.
Claim 10 recites:
10. A method for decoding received digital data elements representing source data elements coded according to the coding method of claim 1, wherein said decoding method comprises an iterative decoding procedure comprising the steps of:
in a first iteration, combining each of said received digital data elements with a predetermined value to form an intermediate data element,
decoding the intermediate data element representing each received data element to produce a decoded data element,
estimating said source data element, by means of said decoded data element, to produce an estimated data element,
and for all subsequent iterations, combining each of said received data elements with one of said estimated data elements estimated during a preceding iteration.
Applying the “integrated approach,” the court found that the claims clearly fit into one of the four statutory classes since the methods of claims 1 and 10 fall within the definition of a “process.” As such, the court had to consider whether the claimed subject matter claimed a law of nature, a natural phenomenon, or an abstract idea. The court acknowledged that claims 1 and 10 raise abstractness concerns since “error correction coding” and “decoding” involve abstract ideas. The District Court found, however, that claims 1 and 10 do not preempt those abstract ideas as a whole. Rather, claims 1 and 10 are directed to a particular type of error correction coding and decoding, respectively, that follow very particular steps. Specifically, borrowing language from the CLS Bank decision, the steps recited in claims 1 and 10 are “meaningful limitations” and “contain additional substantive limitations that narrow, confine, or otherwise tie down the claim so that, in practical terms, [the claims do] not cover the full abstract idea itself.” CLS Bank Int’l, 717 F.3d at 1282. Judge Orrick further explained, “Claim 1 does not preempt error-correction coding generally, nor does Claim 10 preempt decoding generally. They both provide unique and detailed methods with concrete steps to be applied, and [the patent challenger] has provided no evidence that the steps recited are inherent in error-detection coding or decoding.”
Accordingly, the court in France Telecom denied summary judgment of invalidity for claims 1 and 10. A partial summary judgment was granted on other grounds unrelated to the § 101 issue.
Assuming the “integrated approach” survives the Supreme Court’s review of the CLS Bank case, it will be critical for patent holders to define the scope of the implicated abstract idea as something broader than the scope of the claims. It is not clear from the France Telecom decision how the court settled on the scope of the abstract idea. It may have simply come from the preambles of claims 1 and 10.
Interestingly, the court noted, “The claims also provide ‘inventive concepts’ that exceed the prior art, namely, coding in parallel and a novel method of iterative coding.” Order at 15. A plurality of Federal Circuit judges in the CLS Bank case defined an “inventive concept” as a “human contribution to the claimed subject matter.” CLS Bank Int’l, 717 F.3d at 1282. Using the scope of the prior art as a gauge for patent eligibility is not new. The Supreme Court has previously suggested that the scope of the prior art informs patent eligibility under §101 to the extent that the claims simply “consist of well-understood, routine, conventional activity already engaged in by the scientific community…” Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1298 (2012).