Delaware’s Judge Robinson, who recently pointedly noted other courts’ aggression in holding software patent claims to recite patent-ineligible subject matter, has granted a motion to dismiss, finding that patent claims directed to remote operation of a terminal device are not patent-eligible. Device Enhancement LLC v. Amazon.com, Inc., Civ. No. 15-762-SLR (D. Del. May 17, 2016). Along the way, Judge Robinson evinced frustration -- understandable to those of us in the patent bar -- with the vague, "evolving" nature of patent-eligibility jurisprudence under 35 U.S.C. § 101.
Claim 1 of U.S. Patent No. 7,747,683 – the only independent claim of the ’683 patent – recites:
A method for allowing a user of a mobile terminal device having predetermined computational resources and inherent capabilities to remotely develop and operate upgraded content delivery application(s), comprising:
a) installing, on said terminal device, a generic client-side application designed to be compatible with different terminal devices with different inherent capabilities;
b) installing, on a server being in data communication with said mobile terminal device, a corresponding remote application for implementing the logic for each operated content delivery application and for performing, whenever required, most of the graphical processing according to said predetermined computational resources and inherent capabilities;
c) allowing said server to exchange data with said terminal device;
d) dynamically splitting, by said remote application, the tasks to be performed by said content delivery application between said client-side application and remote application, according to said computational resources and inherent capabilities;
e) adaptively processing, by said remote application, the content and its associated logic and input data to be delivered to said mobile terminal device according to said computational resources and inherent capabilities;
f) transmitting the processed content to said mobile terminal device over said data network;
g) rendering said content by said client-side application; and
h) allowing the client-side application to respond to inputs from the user and/or to messages from the server or further connected devices.
Judge Robinson devoted much of her opinion to discussing Federal Circuit jurisprudence behind “the still difficult-to-discern requirements of the Alice analysis.” She explained that, “[i]n trying to sort through the various iterations of the § 101 standard,” she would use Enfish, LLC v. Microsoft Corp. and DDR Holdings, LLC v. Hotels.com, L.P., the two cases in which the Federal Circuit, after Alice, has held software claims patent-eligible, “as the benchmark in software and computer cases." Thus,
[a]t step one of the Alice analysis, the claims (informed by the specification) must describe a problem and solution rooted in computer technology and the solution must be specific enough to preclude the risk of pre-emption. At step two, the claimed solution must be innovative enough to "override the routine and conventional" use of the computer.
As a threshold matter, the plaintiff argued that claim construction was needed before the issue of patent-eligibility could be decided. The defendant responded that the “plaintiff’s . . . broad constructions” demonstrated a failure to “impart any specificity on the patent claims.” In her analysis, Judge Robinson sided with the defendants.
Here, the claimed method was not limited to any particular implementation. Even if the Enfish court blurred the two steps of the Alice analysis (determination of an abstract idea and determination of whether a claim recites significantly more), Judge Robinson explained that “it is evident that there is a specificity requirement.” Here, the claim recited “various computer components” that “cover a broad spectrum of devices and networks.” In sum, the claimed method “generally provides for the installation of a generic client-side application on the terminal device in the installation of a corresponding remote application on the server.” The "specificity requirement" was not met; Judge Robinson agreed that the claimed method “would pre-empt substantially all uses of the underlying ideas at issue, that is, using distributed architecture to increase the capabilities of individual devices by using remote resources.”