In granting a motion to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test, a court held that patent claims directed to “granting permission to access personal information in exchange for enhanced functionality…[of] a routine piece of software” are abstract ideas, and “merely stat[ing] that the claims teach a technology-based solution, which improves the functionality of the prior art” does not provide an inventive concept. Veripath, Inc. v. Didomi, No. 19-civ-1702 (GBD) (S.D.N.Y. Mar. 30, 2020) (patent-in-suit is U.S. Patent No. 10,075,451).
Independent claim 1 of the ‘451 Patent is reproduced here:
1. A method for controlling access to a user’s personal information comprising:
providing a software component for inclusion in an application, the software component having an application programming interface (API);
obtaining, from the application executing on a device of a user of the application, personal information about the user of the application, the personal information obtained via the API by the software component executing on the device;
identifying the type of the obtained personal information;
determining, based on at least the type of obtained personal information, a required permission from the user for at least one proposed use of the obtained personal information;
presenting, to the user, a first offer to provide access to at least one enhanced function of the application in exchange for the required permission; and
responsive to the user providing the required permission, providing the user with access to the at least one enhanced function of the application.
The court applied the two-step Alice framework when considering Didomi’s Rule 12(b)(6) motion to dismiss. The court noted that, in software cases, Alice step one “‘often turns on whether the claims focus on “the specific asserted improvement in computer capabilities…or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.’” Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018). Further, the court noted that “[s]uch asserted improvement in computer functionality must have ‘the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.’” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
VeriPath argued that “the ‘451 Patent provides improvement in computer functionality ‘by teaching a very specific solution to the technical problem faced by prior art data privacy systems and methods.’” However, the court explained that the ‘451 Patent “fails to teach a ‘specific way to improve the functionality of a computer,’” Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1152 (Fed. Cir. 2019), because “the ‘451 Patent simply improves the abstract concept of privacy-for-functionality by invoking the API as a tool.” Therefore, the court found that the ‘451 Patent was directed to the abstract idea of “exchanging privacy for functionality.”
The court went on to analyze the claims under step two of Alice. VeriPath argued that “‘the real-time data privacy and opt-in system and methods…undoubtedly teach a “technology-based solution” that improves the function of the prior art systems and methods.’” The court was not convinced. The court explained that the steps of the asserted claim “are high-level steps lacking anything technological or inventive that simply describe the abstract idea of exchanging privacy for functionality.” As such, the court found that the claims of the ‘451 “lacks any inventive concept that would salvage it from invalidity.” Therefore, the court held the ‘451 Patent does not satisfy the Alice framework and is patent ineligible subject matter.
Lessons for Practice
Like many previous decisions, this case demonstrates the importance of drafting the claims and specification toward a technical solution to a technical problem. However, as this case further illustrates, merely stating that the disclosure provides a technical solution to a technical problem is not enough to establish patent eligibility under § 101. Further, merely using “software to achieve [a] desired result” does not elevate an abstract idea to a patent-eligible invention. Instead, draft the claims and specification for a software application towards how “an improvement in computer functionality” is achieved to show a technical solution to a technical problem.