The District of Delaware recently issued an instructive decision on eligible subject matter under § 101, invalidating one family of patents while upholding another. IPA Technologies, Inc. v. Amazon.com, Inc.
Plaintiff IPA Technologies asserted two families of patents against a typical lineup of tech giants, Amazon, Microsoft, and Google. IPA started by asserting just one family of three patents from a common specification, the “Halverson patents,” U.S. Patent Nos. 6,742,021; 6,523,061; and 6,757,718. Claim 1 of the ’021 patent is representative of the rest:
1. A method for speech-based navigation of an electronic data source, the electronic data source being located at one or more network servers located remotely from a user, comprising the steps of:
(a) receiving a spoken request for desired information from the user;
(b) rendering an interpretation of the spoken request;
(c) constructing at least part of a navigation query based upon the interpretation;
(d) soliciting additional input from the user, including user interaction in a non-spoken modality different than the original request without requiring the user to request said non-spoken modality;
(e) refining the navigation query, based upon the additional input;
(f) using the refined navigation query to select a portion of the electronic data source; and
(g) transmitting the selected portion of the electronic data source from the network server to a client device of the user.
That complaint was dismissed without prejudice for ineligible subject matter, so IPA filed an amended complaint reasserting that family along with additional pleading and another family of patents, the “Cheyer patents,” U.S. Patent Nos. 6,851,115; 7,069,560; and 7,036,128. Here is claim 61 of the ’115 patent, again representative of the rest:
61. A facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having a plurality of autonomous service-providing electronic agents, the facilitator agent comprising:
an agent registry that declares capabilities of service-providing electronic agents currently active within the distributed computing environment; and
a facilitating engine operable to parse a service requesting order to interpret a compound goal set forth therein, the compound goal including both local and global constraints and control parameters, the service request formed according to an Interagent Communication Language (ICL), wherein the ICL includes
a layer of conversational protocol defined by event types and parameter lists associated with one or more of the events, wherein the parameter lists further refine the one or more events; and
a content layer comprising one or more of goals, triggers, and data elements associated with the events; and
the facilitating engine further operable to construct a goal satisfaction plan by using reasoning that includes one or more of domain-independent coordination strategies, domain-specific reasoning, and application-specific reasoning comprising rules and learning algorithms.
The two families faced different fates. The court invalidated the Halverson patents as ineligible subject matter, this time with prejudice. The problem for the Halverson patents was that they basically recited a function of receiving a spoken command and then looking something up based on the spoken command. The court found this to be an abstract idea under Alice Step One and distinguished the Federal Circuit cases cited by IPA in which patents had been upheld as eligible; in those cases, the claims at issue had not been purely functional. The claims were “drafted so broadly as to cover any method that can achieve navigating electronic databases by spoken natural language input.” IPA also pointed to new statements in its amended pleadings, but the court noted that such statements could not overcome the language in the specification and claims of the patents.
In Alice Step Two, the court found that the claims merely used conventional technology. Again, the facts pleaded in the complaint cannot be used to contradict the specification and claim language.
The Cheyer patents fared differently. The court found that the patents contained specific ideas that were not abstract, and the patents escaped in Alice Step One. “The Cheyer patents describe a specific software architecture that employs facilitators for delegation and coordination, construction of arbitrarily complex goals, an expandable inter-agent communication language, service-providing agents and a distributed process where no single agent defines the set of possible inputs.” The crucial different was that this family of patents included “specific structures by which these improvements in functionality are achieved.” The defendants argued that the patents did not explain how the recited facilitators perform certain tasks, but the court rejected this argument as going to enablement, not eligibility.
Lessons for Practice
Comparing the claims above shows what kinds of claim recitations help a computer-related patent under § 101, and what kinds don’t. Bad: “rendering an interpretation of the spoken request.” Good: “the compound goal including both local and global constraints and control parameters, the service request formed according to an Interagent Communication Language (ICL).”
This case also demonstrates the difficulty of fixing an eligibility problem after a patent issues. A patent is attached to a complaint and is therefore part of the complaint, meaning that a court can rely on what the patent says. If the specification contains unfavorable language, as in this case, the pleadings can be discounted in favor of that unfavorable language. The time to address § 101 issues is during prosecution, not litigation.