Lack of Functional Improvement Renders Method Claims Ineligible

The District of Delaware recently granted a motion to dismiss based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test, in claims of U.S. Patent No. 8,429,005 directed to a method for providing a user an electronic replication of a physical publication page. Tangelo IP, LLC v. Tupperware Brands Corp.  No. 18-cv-692-RGA (D. Del. Nov. 26, 2018). The claims of the ‘005 patent were ineligible because the claims were directed toward the abstract idea of “using an identifier to allow a reader of a printed publication to access related information not in the printed publication,” and the claim limitations failed to “amount to ‘significantly more’ than…the abstract idea itself.”

The court held claim 1 of the ‘005 patent was a representative claim. Claim 1 is reproduced here:

1. A method for providing a user an interactive and electronic replication of at least a portion of a corresponding physical publication page, comprising:

associating a page number of a physical publication page with an interactive and

electronic replication of at least a portion of a physical publication page;

the physical publication page having at least two different products appearing on

the physical publication page;

the page number appearing on the physical publication page along with the at

least two different products;

the page number and the two different products being visible on the physical

publication page;

receiving by a host computer comprising at least one computer processor an input representing the page number;

providing from the host computer the interactive and electronic replication of the

at least a portion of the physical publication page in response to receiving the

input representing the page number;

the interactive and electronic replication of the at least a portion of the physical

publication page including duplications of the appearances of the at least two

different products;

the duplications of the appearances of the at least two different products being

exact reproductions of the appearances of the at least two different products

contained within the physical publication page;

the interactive and electronic replication enabling the user to obtain additional

information on the at least two different products contained within the interactive

and electronic replication; and

wherein the user is able to see the interactive and electronic replication and the at least two different products in the physical publication page and can obtain the

additional information on the at least two different products contained within the

interactive and electronic replication of the at least a portion of the physical

publication page by receiving the interactive and electronic replication.

The court applied the two-step Alice framework to Tupperware Brands’ Rule 12(b)(6) motion to dismiss.  Citing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 2015),the court noted that “[c]laimed methods that describe concepts ‘long-practiced in our society’ have been found directed to an abstract idea under Alice step one.” Unlike the tabs in the electronic spreadsheets in Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1011 (Fed. Cir. 2018), the claims of the ‘005 patent “do not describe ‘specific structures’ that provide functional improvements.” The court found “that the ‘005 patent is directed to the abstract idea long-practiced by retailers providing telephone sales representatives to support their printed product catalogs.” Tangelo argued that the claims solve “a technological problem…via an unconventional technological solution,” like the claims in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). However, the court found that “the claimed improvement is to the physical publication page” and the claims “do not address ‘the way computers operate.’”Therefore, the court found that claim 1 of the ‘005 patent was directed to an abstract idea because the claims “are not directed to improvements in computer functionality.”

Moreover, under Alice step two, “[m]ethod claims that ‘merely require generic computer implementation’ do not transform an abstract idea into a patent-eligible invention.” Claim 1 of the ‘005 patent “merely applies the abstract idea of using a catalog identifier to obtain additional product information in a generic computer environment.” The court found that Claim 1 fails to provide an inventive concept, but simply substitutes “receiving information orally from a sales representative…[with] receiv[ing] information visually on the computer.” Therefore, the court found claim 1 failed the Aliceframework and was drawn toward ineligible subject matter.

Lessons for Practice

As recently discussed in Realtime Adaptive Streaming v. Google, when drafting software applications, be sure to incorporate technical improvements and structure into the method claims. This case illustrates that, like system claims, structure alone is insufficient to make method claims patent-eligible. Instead, method claims need to be directed toward functional improvements to the computer and include specific structure that provides the functional improvement to clear the § 101 hurdle.

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