Patent claims directed to “presenting interactive applications,” such as advertising, “on a computer network” with multiple “user reception systems” are patent-eligible under 35 U.S.C. § 101 says Delaware’s Judge Stark. International Business Machines Corp. v. Groupon, Inc., C.A. No. 16-122-LPS-CJB (D. Del. Nov. 17, 2017). Accordingly, the court denied a defendant’s Rule 12(c) motion for judgment on the pleadings, previously denied and renewed following claim construction, that claims of United States Patent Nos. 5,796,967 and 7,072,849 were patent-ineligible under the Alice abstract idea test.
The court identified claim 1 of the ’967 patent as representative:
A method for presenting interactive applications on a computer network, the network including a multiplicity of user reception systems at which respective users may request a multiplicity of available applications, the respective reception systems including a monitor at which the applications requested can be presented as one or more screens of display, the method comprising the steps of:
a. generating a screen display at a respective reception system for a requested application, the screen display being generated by the respective reception system from data objects having a prescribed data structure, at least some of which objects may be stored at the respective reception system, the screen display including a plurality of partitions, the partitions being constructed from objects, the objects being retrieved from the objects stored at the respective reception system, or if unavailable from the objects stored at the respective reception system, then from the network, such that at least some of the objects may be used in more than one application;
b. generating at least a first partition for presenting applications; and
c. generating concurrently with the first partition at least a second partition for presenting a plurality of command functions, the command functions including at least a first group which are selectable to permit movement between applications.
The court acknowledged that “the claims of the ’967 and ’849 patents differ slightly,” but explained that “the parties agree that both . . . patents are directed to the same concept.” (As a side note, it is somewhat interesting that the claims of the two patents were lumped together, because the claims of the ’849 patent appear to be broader, and explicitly call out “advertising,” a word which often telegraphs patent-ineligibility.”)
The defendant relied on a magistrate’s Report and Recommendation, on another party’s earlier motion, for the proposition that the patents at issue “are directed to the abstract idea of local storage.” The defendant further attempted to distinguish this case from Enfish, LLC v. Microsoft Corp., arguing that the patent claims here did nothing more than “claim a functional result with nothing more than a suggestion to use conventional computer concepts to achieve it.” The plaintiff in response argued that the claims improved response times and scalability of distributed applications, and therefore were patent-eligible under Enfish as “directed to an improvement in computer capabilities.”
The court agreed with the plaintiff. Specifically, a “computer-centric improvement,” the court said, was recited in the first step of claim 1 of the ’967 patent:
which requires that the screen display be “generated by the respective reception system from data objects . . . at least some of which objects may be stored at the respective reception system, the screen display including a plurality of partitions, the partitions being constructed from objects . . . retrieved from the objects stored at the respective reception system, or if unavailable . . . , then from the network.” This method allows the computer to function more quickly by speeding the data storage process and reducing memory requirements, allowing the computer to serve more users.
Moreover, the court explained, the patent claims were not simply “results-based functional language.” Instead, they recited “how to achieve the result.” (Emphasis in original.) The claims did not simply recite the functionality of providing a display, but “describe the specific architecture behind the claimed computer improvement by reciting how the screen display is generated.”
The court then addressed claims of the ’849 patent. According to the court, “as a whole,” these claims, too, were “not directed to local data storage generally,” recited the specific features of partitioning data, storing it locally, and selectively retrieving it.
Finally, the court addressed the defendant’s argument that the patents had and “unacceptably high” threat of preemption. The court found not, because the claims recited “a specific improvement,” and “do not preempt all manners of improving data storage.”