Patent claims directed to establishing online chat sessions are not patent-eligible under 35 U.S.C. §101 and the Alice/Mayo test, said Federal Circuit Judge Bryson, sitting in the District of Delaware, in granting a defendant’s motion to dismiss. Epic IP LLC v. Backblaze, Inc., C.A. No. 1:18-141-WCB (D. Del. Nov. 21, 2018).
Here are the representative independent claims of U.S. Patent No, 6,434,599:
1. An on-line chatting method comprising:
facilitating visit by a first on-line user to an information page of an information site;
facilitating dynamic formation of a chat session unaffiliated with any pre-established chat room for said first on-line user and a second on-line user to chat with each other; and
facilitating said chat session through which said first and second on-line users chat with each other.
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19. An information server comprising:
a plurality of information pages to be selectively provided to a client computer responsive to the client computer's request; and
a first script/applet to be included with a responsive information page to enable the client computer to initiate dynamic formation of a chat session unaffiliated with any pre-established chat room for a user of the client computer to chat with a second user of interest, also visiting the information server.
Addressing step one of the Alice test, Judge Bryson noted that the idea of the claims, an Internet chat session, could
be expressed at several different levels of generality: (1) as the idea of individuals getting together to communicate; (2) as the idea of individuals getting together to communicate over the Internet; or (3) as the idea of individuals getting together to communicate over the Internet by forming a sub-group from the group of individuals visiting a website.
But at any level, the claimed idea was “commonplace.” Judge Bryson rejected the patent owner’s argument that the claims were not abstract because they used the Internet. The claims recited “the idea of a chat session separate from the original website,” which “is not an invention; it is a concept,” and it was a concept that the claims did not explain how to implement.
In raising arguments that the claims implemented technology, the patent owner relied on Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018). But the present claims provided no technological improvement, whereas the claims inFinjan“solved a technological problem in a technological manner, by fashioning a new way of conducting virus scans.” This case did not fall in the line of cases holding technical improvements patent-eligible, seeEnfish, LLC v. Microsoft Corp. (Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games America Inc.(Fed. Cir. 2016) , nor did it fall in the line of cases holding improvements to user-interfaces patent eligible. See Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc. (Fed. Cir. 2018); Data Engine Techs. LLC v. Google LLC (Fed. Cir. 2018). The idea of the chat session claimed here was “more akin to the claim in [Intellectual Ventures I LLC v. Erie Indemnity Corp. (Fed. Cir. 2017)], which was directed to the use of an index to search for and retrieve data, . . . an unpatentable abstract idea.”
In light of Judge Bryson’s comments in applying Alicestep one, it is no surprise that, under Alicestep two, Judge Bryson found no inventive concept that was significantly more than the unpatentable abstract idea. The patent owner essentially argued that “the inventive concept resides in the invention itself, as a whole.” But Judge Bryson said that the Federal Circuit had rejected that approach, quoting BSG Tech LLC v. BuySeasons, Inc. (Fed. Cir. 2018) for the proposition “that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”
Judge Bryson then went on to criticize the claims of the patent-in-suit for claiming via “functional terms lacking in specificity or through generic structures described at a very high level of generality.” Field of use limitations, here, limiting the claims to the Internet, could not make an otherwise pure functional limitation patent-eligible.
Finally Judge Bryson addressed whether it was appropriate to here resolve the patent-eligibility issue on a motion to dismiss, especially under Berkheimer v. HP Inc. (Fed. Cir. 2018), and Aatrix Software, Inc. v. Green Shades Software, Inc. (Fed. Cir. 2018). Here, neither fact nor claim construction questions prevented dismissal. The only “inventive concept” asserted by the patent owner was the claimed abstract idea itself, which raised no fact question. And the patent owner pointed to no claim construction issue.
Lessons for Practice
Judge Bryson’s attack on functional claiming is worth noting for two reasons. First, it is a reminder to avoid “pure functional claiming” wherever possible. But second, functional claiming is all but impossible to avoid in claims to software inventions. So practitioners should pay heed to Judge Bryson’s discussion of whether the present claims presented a technological solution to a technological problem. Even when your claim recites functionality, you may save the claim if you can point to a technical improvement captured in the claims. Where claims simply recite the implementation of a concept, they may be difficult to save.