Lack of Inventive Support leads to Patent Ineligibility

E. District Court of Virginia grants summary judgment to Defendant Amazon finding claims of USRE46140 (reissue of U.S. Pat. No. 6,618,705) ineligible under 35 U.S.C. § 101 based on a lack of support in the specification for how the purportedly inventive aspect of the claims achieved its ‘switching’ results. Va. Innovation Sci. v. Amazon.com, Inc., Civil No. 1:16-cv-00861 (E.D. Va. Jul. 5, 2017).

Virginia Innovation Sciences (VIS) sued Amazon for infringement of the claims of a number of patents; this article addresses only the reissued patent (hereafter, the ‘140 patent).  As described by in the district court opinion:

The ‘140 patent is directed to securely processing credit card payments for online purchases by switching the user from a merchant server to a payment server.  A system allows users to purchase goods on the internet through a secure payment server.  In the system, the user sends a message that she wants to buy an item from a merchant website.  Once the purchase request has been made, the buyer is "shifted" from the merchant site to the secure payment server.  After the buyer is shifted to the secure payment server, the server performs the standard functions which would otherwise have been performed by the merchant server (receiving credit card information over an encrypted connection which transmits the payment information to the acquiring bank for payment processing, and confirming the transaction through the merchant server).  The point of the '140 patent is to switch the communication channel after the buyer decides to make a purchase.1

VIS described its invention as “providing enhanced security to a computer system by performing a number of steps to securely process credit card payment information” – inventive concept (per the Alice two-step analysis) being the limitation “the buyer has been switched.” 

During the claim construction phase of the case, the court noted that the ‘140 patent lacked detail regarding the shift (or switch) between the servers.  And following its review of the pleadings and hearing of oral argument, the court noted that VIS has not presented sufficient evidence to show that the '140 patent discloses a means of accomplishing switching from the website listing the items to a website supported by the payment server—repeatedly noting that the '140 patent explained that the buyer "is switched," without explaining how the switch occurs.

The court’s opinion walks through the Section 101 analysis in accordance with the Alice decision, finding the claims directed to an abstract idea (Step One).  And in Step Two, the court finds too little support for the purported inventive subject matter:  switching the buyer.  The court notes that VIS has not identified any new or improved technology for achieving the ‘switching;’ that VIS has not explained how the switching is accomplished; that VIS identifies no algorithm, computer program, or mechanism for performing the switch; and that VIS's own expert could not identify how the buyer “is shifted.”  Citing Elec. Power Grp, LLC v. Alstom S.A. (see also discussion on Software IP Report), the court found that the ‘140 patent was invalid for failure to identify a patentable subject matter under § 101.  Accordingly, the court granted Amazon’s motion for summary judgment of invalidity.  (For analyses of other patent eligibility cases, see here.) 

Lessons for Practice

When drafting process claims, especially in a software implementation, develop the written specification to buttress and support each claim limitation but especially the inventive aspects of the claimed technology.  This often requires pressing the inventors for more information than is offered in an initial disclosure.

In the context of the case above, if the ‘140 patent2 included additional support for switching the buyer (and that additional support provided sufficient evidence to permit the court to find that the switching was an inventive concept providing an advantage over the prior art), the claims may have survived § 101 scrutiny.

Further, based on the opinion’s discussion of ‘switching the buyer,’ it appears that the court could have found the claims indefinite under 35 U.S.C. § 112(b) for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.  Thus, this could have been another pitfall.

One last point.  This case re-emphasizes a lesson from Elec. Power Grp—claim and provide written support for the means, not the end.  For claims likely to be challenged under § 101, provide the litigating attorney a colorable argument by explaining, in the written description, how the novel aspects are achieved (e.g., how switching the buyer is achieved), not merely stating the results of the novel aspects.

 

End Notes

  1. The ‘140 patent included both a method claim and a computer program product claim reciting “switching” the “buyer.”
  2. S. Pat. No. 6,618,705 was granted prior to the Alice decision, and the corresponding reissued ‘140 patent was granted post-Alice.

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