Network Monitoring Patents Fail Alice Test, Says Delaware’s Judge Stark

Two patents directed to monitoring network response times to determine responsiveness of network services are invalid under 35 U.S.C. § 101 and the Alice/Mayo test, held Judge Stark in the District of Delaware. Citrix Systems, Inc. v. AVI Networks, Inc.No. 17-1843-LPS (D. Del. Feb 13, 2019). Accordingly, the court granted a Rule 12(b)(6) motion to dismiss claims of infringement of US Patent Nos. 8,230,055 and 7,720,954.

The court found that claims of the ’055 and ’954 patents “are directed to the abstract idea of using a dynamic response time to determine availability.” The patents distinguish themselves from the prior art by explaining that the dynamic determination of response time, taking “into account variations due to increased load or type of request,” was more accurate than prior art methods that determined availability using static response times. Thus, in the words of the court, “the claimed innovation is the use of one formula (determining availability using an average response time) instead of another, prior art formula (determining availability using a predetermined response time) with the same arrangement of computer components.” By focusing on “the use of an ostensibly improved formula,” the court said, “the claims are directed to an abstract idea.”

The court rejected the patent owner’s argument that the claims were not directed to an abstract idea because they improved computing functionality. Even if the claims did so, they could not survive Alice “if the technical benefits flow solely from performing an abstract idea in conjunction with well-understood structure.” There were no novel technical elements here. This case was distinguishable, therefore, from Ancora Technologies, Inc. v. HTC America, Inc. (Fed. Cir. 2018), Visual Memory, LLC v. NVIDIA Corp. (Fed. Cir. 2017), and Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016).

The real question, the court said, was whether the present case was, as the patent owner argued, distinguishable from BSG Tech LLC v. BuySeasons, Inc. (Fed. Cir. 2018) (claims directed to indexing and accessing information in large databases held patent-ineligible) . No, said the court: “both this case and BSG Techinvolve patents that apply an abstract idea in a technological context to obtain a purported technical benefit.” There was no difference whether the technological context was “white access databases” improved by more efficient access as in BSG Tech, or, as in the present case, whether “the technological context as computer networks, and the purported benefits arise from more accurate determination of whether a network services available.”

Turning to the second part of the patent-eligibility test, whether an abstract idea could be patent eligible by reciting an unconventional inventive concept, not here, found the court. Even if the patent owner was right in alleging “novelty and benefits of using dynamic response times,” these did not provide an inventive concept. Use of dynamic as opposed to static response times was the “only allegedly unconventional feature of the claims,” and this had already been determined to be an unpatentable abstract idea. As such, it could not “provide an inventive concept.”

Lessons for Practice

Interestingly, the court seemed to acknowledge that the purported technological innovation, use of dynamic response times, may not be found in the prior art. While this is consistent with the case law, which distinguishes prior art and patent-eligibility questions, it is nonetheless interesting that this was not enough to confer patent-eligibility. Further, because these claims could only be practiced in a digital environment, and solved a problem in that environment, one suspects that other courts may have decided the present motion differently, at least deferring the patent-eligibility question two summary judgment.

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