In IDB Ventures, LLC v. Charlotte Russe Holdings, Inc. (2:17-CV-660-WCB-RSP), the Eastern District of Texas highlighted the effectiveness of showing that a patent claim is directed to a specific improvement to computer functionally for overcoming a challenge based on 35 U.S.C. § 101.
Plaintiff IDB Ventures, LLC, (IDB) sued Defendant Charlotte Russe Holdings, INC., (Charlotte Russe) for infringement of U.S. Patent No. 6,216,139 (the ‘139 patent) entitled “Integrated Dialog Box for Rapidly Altering Presentation of Parametric Text Data Objects on a Computer Display.” Claim 1 of the ‘139 patent recites:
1. A method for using a computer system to sort and display text data objects, comprising the steps of:
a. imaging, on a display device controlled by the computer system, a query dialog box,
where in the query dialog box displays each of a plurality of parameters associated with each of the text data objects, forms a plurality of spaces for listing values associated with each displayed parameter, and further forms a space for selecting a sort order;
b. designating, for each displayed parameter, a parameter value;
c. constructing a sort order from the displayed parameters in the space for selecting a sort order;
d. selecting, using the computer system, text data objects satisfying the designated values; and
e. sorting, using the computer system, the selected text data objects according to the constructed sort order.
Independent claim 19 of the ‘139 patent is directed to an apparatus having means plus function limitations that correspond to the method of claim 1.
Charlotte Russe challenged the validity of the claims of the ‘139 patent in a Fed. R. Civ. P. 12(b)(6) motion to dismiss as being directed to patent ineligible subject matter under 35 U.S.C. § 101, and therefor rending IDB’s complaint insufficient for failing to state a claim.
In analyzing the merits of Charlotte Russe’s assertion that the claims of the ‘139 patent were not direct to patent eligible subject matter, the court looked to a long string of cases instructing the application of § 101 under the two-part Alice test. Under the Alice test, a patent may be deemed to satisfy the requirements of § 101 when the claims are directed to a patent eligible concept, i.e., the claims are not directed merely to an abstract idea. Finding the claims are not directed to an abstract idea satisfies the first prong of the two-part Alice test and eliminates a need to examine the claims under the second prong. Caselaw relied on by the court indicated that an invention is not abstract when the claims at issue are directed to specific improvements to computer functionality.
Charlotte Russe argued that the object of the invention claimed in the ‘139 patent “is to target the generic concept of obtaining user parameters for selecting and sorting data, then selecting and sorting data using those parameters.”
As a basis for its analysis of Charlotte Russe’s arguments, the court discussed cases with patent claims directed to user interfaces for computer related inventions that had a finding of the claims being patent eligible, e.g., the claims were found to not be abstract ideas. The discussed cases include: Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,880 F.3d 1356 (Fed. Cir. 2018); Data Engine Techs. LLC v. Google LLC,No. 2017-1135, 2018 WL 4868029 (Fed. Cir. Oct. 9, 2018); Trading Technologies International, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017); and DDR Holdings, Inc. v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Next, the court contrasted these cases with others directed to user interfaces that had a finding of the claims being abstract. The discussed contrasting cases include: Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017); and Evolutionary Intelligence LLC v. Sprint Nextel Corp., 677 F. App’x 679 (Fed. Cir. 2017).
Based on these cases, the court rejected Charlotte Russe’s arguments. The court pointed out that Charlotte Russe ignored specific improvements of the claimed invention over the prior art, specifically the use of a query dialog box to facilitate the presentation, sorting, and selecting of data. The court distinguished the claims of the ‘139 patent from Intellectual Ventures and Evolutionary Intelligence, finding the claims to be more analogous to those in Core Wireless and Data Engine, and finding that Charlotte Russe failed to show that the claims of the ‘139 patent were abstract.
Lessons for Practice
While IDB Ventures does not provide any bright line rules with respect to § 101 and had an outcome that may have gone either way, it does provide a good roadmap for § 101 analysis by identifying and discussing the several guidepost cases mentioned above. Reviewing and understanding these cases, and the analysis provided by the court in IDB Ventures is beneficial to drafting patent applications that will stand up to scrutiny under § 101 and for asserting and defending patent subject matter eligibility based challenges in court.