In two recent § 101 orders on motions to dismiss, two district courts demonstrated how inconsistent patent-eligibility jurisprudence remains. The courts faced claims of similar complexity, similar subject matter, and similar reliance on software; sat in the same procedural posture; used the same number of pages of analysis (five); and reached opposite conclusions.
Youtoo Technologies accused Twitter (through its acquisition of Vine) of infringing multiple patents. Youtoo Techs. LLC v. Twitter Inc., No. 3:16-CV-00764N (N.D. Tex. Nov. 10, 2016). Here is a representative claim from U.S. Pat. No. U.S. Pat. No. 8,464,304:
A method performed by data processing apparatus, the method comprising:
receiving video data from a client computing device at a server system, wherein the video data is captured using a camera connected to the client computing device in accordance with instructions executed on the client computing device, wherein the instructions are provided to the client computing device by the server system and cause the video data to be captured in accordance with predetermined constraints and the predetermined constraints include a frame rate defined by the instructions;
automatically transcoding the video data, using a server included in the server system, into at least one different format based on at least one of user credentials associated with a user of the client computing device or attributes associated with the video data, wherein at least one format of the transcoded video data defines a video file in a format appropriate for inclusion in a linear television programming broadcast; and
uploading the transcoded video data to a distribution server for distribution.
Subjecting this and the rest of the claims to Step 1 of the two-step Alice test, the court determined that the patents “merely facilitate uploading video,” which is an abstract concept like “similar claims directed toward gathering, processing, and outputting information.” Youtoo at *3–4.
The court in F5 Networks, Inc. v. Radware, Inc., No. 2:16-cv-00480-RAJ, at *10–11 (D. Wash. Nov. 14, 2016), similarly found the claims at issue in that case abstract in Step 1, this time as “akin to a filtering mechanism.” For context, here is claim 1 of U.S. Pat. No. 6,311,278:
A method for defining a set of allowable actions for an application program residing on a server, the method comprising:
receiving a message transmitted by the server addressed to one or more clients;
extracting application protocol data from the server message to thereby retrieve the set of allowable actions which may be taken in response to the server message;
storing the extracted application protocol data in a protocol database.
So far, so good; now for Step 2. The F5 court held up software elements from the claims as transformative: “Claim 15, for example, describes a ‘security gateway system … comprising a protocol database,’ ‘filter module,’ and ‘protocol extraction module.’” F5 at *12. The ’278 patent thus does not “preempt any other filtering mechanism.” Id.
By contrast, the Youtoo court focused on “generic hardware” limitations as insufficiently transformative: “[n]or does Youtoo explain how these components sufficiently limit the abstract concept in a meaningful way.” Youtoo at *4–5. The Youtoo court did not address whether the software limitations transform the claims despite that the claims stretch longer than “gather, process, and output information.” Also unlike F5, the Youtoo order lacked the word “preempt.”
Since these two cases are at the pleading stage, their outcomes may converge if the F5 court invalidates the patent in summary judgment or at trial. But the cases show that, as mentioned in this blog’s November 15 post, this area of law continues to lack consistency.