The Federal Circuit has held patent-ineligible claims of four patents directed to multicasting audio/visual data over a network. Two-Way Media Ltd. v. Comcast Cable Communications, Nos. 2016-2531, 2016-2532 (Fed. Cir. Nov. 1, 2016) (precedential; panel was Judges Lourie, Reyna, and Hughes). The court thus affirmed a Delaware district court’s judgment on the pleadings based on ineligibility of the four patents under the test of Alice Corp. v. CLS Bank Int’l. Claims of U.S. Patent Nos. 5,778,187 and 5,983,005 were directed to the unpatentable abstract idea of sending, directing, monitoring, and accumulating records about, information. Claims of U.S. Patent Nos. 6,434,622 and 7,266,686 were directed to the unpatentable abstract ideas of “monitoring the delivery of real-time information to a user or users, and “measuring the delivery of real-time information for commercial purposes,” respectively.
Claim 1 of the ’187 patent was representative of claims of the ’187 and ’005 patents:
1. A method for transmitting message packets over a communications network comprising the steps of:
converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol,
for each stream, routing such stream to one or more users,
controlling the routing of the stream of packets in response to selection signals received from the users, and
monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.
Agreeing with the District Court that the claims of the ’187 and ’005 patents were directed to a patent-ineligible idea, the Federal Circuit explained that the above claim “recites a method for routing information using result-based functional language.” The recitation of “functional results ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records’ . . . does not sufficiently describe how to achieve these results in a non-abstract way.” Instead, the claim simply recited the abstract manipulation of data.
Further, claim 1 of the ’187 patent did not recite in inventive concept to overcome the patent-ineligible abstract idea. The specification may have disclosed a technical architecture, but the claim did not recite it. The claim may have recited using “a network communication protocol,” but “[n]either the protocol nor the selection signals are claimed, precluding their contribution to the inventive concept determination.” The patent owner argued that the claims solve technical problems related to excessive loads, network congestion, and scalability, but the claim “only uses generic functional language to achieve these purported solutions.” Thus, the claim was similar to the patent-ineligible claims in Electric Power Group, LLC v. Alstom, S.A, and distinguishable from BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, because the claim required only generic computing technology that was not arranged in a non-conventional or non-generic way.
Claims of the ’622 and ’686 patents were similarly patent-ineligible. The District Court did not air in considering a claim preamble for distillation of the abstract idea. And there was no technical solution; the court “agree[d] with the District Court that the claims here – directed to monitoring the delivery of real-time information to user(s) or measuring such delivery for commercial purposes – are similar to other concepts found to be abstract.” These claims are also similar to claim 1 of the ’187 patent in lacking an inventive concept; recitation of technical terms did not amount to “anything other than conventional computer and network components operating according to their ordinary functions.”
Finally, one interesting aspect of this case is that the District Court had entered its judgment of invalidity under 35 USC § 101 after accepting, for purposes of the motion, claim constructions that the patent owner insisted were a necessary prerequisite to the Section 101 analysis. The Federal Circuit explicitly stated that these proposed constructions would not have changed the outcome of patent-ineligibility. I call this interesting because patent owners often argue at the pleading stage that patent-ineligibility questions must be deferred until after claim construction. But the Federal Circuit and district courts frequently seem to disagree.
Lessons for Practice
One theme that runs throughout Judge Reyna’s opinion is an attack on functional claim language. Historically, one might worry about functional language in the context of 35 USC § 112, sixth paragraph. But more and more, functional language is a concern when evaluating patent eligibility under 35 USC § 101. Several lessons flow from this. First, new arrangements of functionality are getting harder and harder to protect. Second, the drafter should take pains where possible (and often it simply is not) to avoid functional language, and to provide as much structural detail as possible in patent claims.