In a precedential decision, the Federal Circuit has held patent-ineligible, under 35 U.S.C. § 101 and the Alice/Mayo test, claims of three patents directed to “data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.” PersonalWeb Techs. LLC v. Google LLC, Nos. 2020-1543, 2020-1553, 2020-1554 (Fed. Cir. August 12, 2021) (Opinion by Judge Prost, joined by Judges Lourie and Reyna). The court’s decision affirmed a district court decision granting judgment on the pleadings that claims of U.S. Patent Nos. 7,802,310 B2, 6,415,280 B1, and 7,949,662 B2, were ineligible under § 101.
The content identifiers were “generated by a mathematical algorithm” such as a hash function, and change “when the data item’s content changes.” Claim 24 of the ’310 patent was discussed an example:
24. A computer-implemented method implemented at least in part by hardware comprising one or more processors, the method comprising:
(a) using a processor, receiving at a first computer from a second computer, a request regarding a particular data item, said request including at least a content-dependent name for the particular data item, the content-dependent name being based, at least in part, on at least a function of the data in the particular data item, wherein the data used by the function to determine the content-dependent name comprises at least some of the contents of the particular data item, wherein the function that was used comprises a message digest function or a hash function, and wherein two identical data items will have the same content-dependent name; and
(b) in response to said request:
(i) causing the content-dependent name of the particular data item to be compared to a plurality of values;
(ii) hardware in combination with software determining whether or not access to the particular data item is unauthorized based on whether the content-dependent name of the particular data item corresponds to at least one of said plurality of values, and
(iii) based on said determining in step (ii), not allowing the particular data item to be provided to or accessed by the second computer if it is determined that access to the particular data item is not authorized.
The court summarized the claimed method as generally proceeding “in three steps: (1) receiving a request containing a content-based identifier for a data item, (2) comparing the content-based identifier to a plurality of values, and (3) granting or disallowing access to the data item based on the comparison.”
Turning to step one of the patent-eligibility test, the court concluded “that the claims [of all three patents] are directed to the use of an algorithm-generated content-based identifier to perform the claimed data-management functions.” These functions could all be reduced to mental steps. The court explained that “each component of the claims’ three-step progression reflects a concept we have already described as abstract.”
First, content-based identifiers were held to be abstract in Secured Mail Solutions LLC, v. Universal Wilde, Inc. (Fed. Cir. 2017), and “generating such identifiers via a known algorithm is no less abstract.” (Citing Intellectual Ventures I LLC v. Symantec Corp. (Fed. Cir. 2016); Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016).) Second, citing Symantec, the court said that “the step of comparing the content-based identifier against other values . . . is also abstract.” Third, although “the data-management function . . . varies across the three patents,” the court stated that “[e]ach such function is abstract.” The data-management functions could be reduced to pen and paper, and all were abstract mental processes.
The patent owner tried to argue that the claims solved a technical problem, specifically by providing “a new way of locating and distributing data in a computer network.” But merely improving efficiency was not enough to make an idea less abstract where “the asserted efficiency improvements are not different in kind from those that would accrue in the library analogue.” The claims merely automated “manual processes using generic computers,” and therefore failed step one of the patent-eligibility test.
The claims also failed at step two. The patent owner argued that the claims recited the allegedly patent-eligible inventive concept of “an application that makes inventive use of cryptographic hashes.” The patent owner’s argument failed because it simply “restate[d] the abstract idea as discussed above.”
Finally, the court rejected the patent owner’s argument, relying on Berkheimer v. HP, Inc. (Fed. Cir. 2018), that judgment on the pleadings was improper because of allegedly outstanding questions of fact. The court saw no such that questions here because all “improvements in the specification” in this case lay in the realm of abstract ideas and did not suggest non-abstract inventive concepts.