Patent Claim Length Doesn’t Save Patent-Eligibility

Unsurprisingly, claims in a patent whose title described “disseminating product information via the internet using universal product codes” were found to be patent-ineligible under 35 U.S.C. § 101 and the Mayo/Alice abstract idea test.  Product Association Technologies LLC v. Clique Media Group, CV 17-05463-GW(PJWx) (C.D. Cal. Oct. 13, 2017).  Finding that the question of patent-eligibility was ripe at the pleadings stage, the court granted the defendant’s Rule 12(b)(6) motion to dismiss for lack of patent-eligible subject matter.

Independent Claim 1 of U.S. Patent No. 6,154,738, indisputably representative of asserted claims 1-4, recites:

1. The method for disseminating product information via the Internet which comprises, in combination, the steps of:

establishing a cross-referencing resource connected to the Internet which includes a database containing a plurality of cross-references, each of said cross-references specifying the correspondence between a group of one or more universal product code values and the Internet address of a source of information which describes the products designated by said group of one or more code values,

transmitting via the Internet a Web page containing at least one hyperlink including a reference to separately stored information, said reference including a particular universal product code value that uniquely designates a selected product,

employing a Web browser program to receive said Web page and display said Web page to a user,

further employing said Web browser to respond to the activation of said hyperlink by said user by transmitting a first request message to said cross-referencing resource, said first request message containing at least a portion of said particular universal product code value,

processing said first request message at said cross-referencing resource by referring to said database to identify the particular Internet address which corresponds to said particular universal product code value and returning a redirection message to said Web browser which contains said particular Internet address;

employing said Web browser to automatically respond to said redirection message by transmitting a second request message to said particular Internet address;

employing a Web server connected to the Internet at said particular Internet address to respond to said second request message by returning product information describing said selected product to said Web browser, and

employing said Web browser program to automatically display said product information from said Web server to said user.

This copious claim language, the court found, boiled down to “the abstract idea of storing product information in a database and identifying and displaying particular product information to a user in response to a request from the user.”  The court entertained the usual debate about whether the claims at issue could be analogized to the Section 101 lifelines provided in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014).  The answer was “no.”  Claim 1 of the ’738 patent was all about functionality, not technology.  The claim simply automates steps that could have been manually carried out in a shopping mall.

Turning to step two of the Mayo/Alice test, the court saw no inventive concept that would render the claims patent-eligible.  The plaintiff argued that various recitations in the claims about links and the Internet showed a non-generic invention.  Unfortunately, the court explained, “[a]s the ’738 Patent specification acknowledges, it relies on ‘two existing and highly successful technologies: the Internet and the universal product code system.’”  The court then provided an element-by-element analysis of claim 1 to demonstrate that the claim recitation, “considered both element-by-element and as a whole, do not provide 1) technological improvements or 2) non-conventional processes for employing these two highly successful technologies.”

Finally, the court addressed he fact that the complaint appeared to assert only independent claim 1 (from which claims 2-4 depend), and did not mention claim 5, an apparatus claim that is the other independent claim in the ’738 patent, and from which claims 6-14 depend.  Rather than give the plaintiff the opportunity to amend, the court simply dismissed the case.  In so doing, the court seemed to give the plaintiff a hint (and I may be reading this in here, I admit) that pursuing claims 5-14 in this forum would not be such a good idea with this reasoning: “(1) Plaintiff may have never intended to assert Claims 5-14; and (2) Plaintiff may desire a final judgment as to Claims 1-4 so that the question of those claims’ validity may be directly appealed.”

Lessons for Practice

You might be wondering why I wrote about a patent-eligibility case of the type that now appears routine, and who outcome could have been easily predicted.  Two reasons.

First, there is a tendency to think that detailed claims reciting computer and Internet technology can sometimes be saved because, if you have a lot of words, surely there is some element, or combination of elements, that can demonstrate an inventive concept beyond an abstract idea.  As this case demonstrates, that is less and less so.

Second, take another look at both Enfish and DDR Holdings.  I would submit that Enfish is genuinely distinguishable – there were not facts here to support an improvement to computer processing, as in Enfish.  On the other hand – although the court drew a distinction – to my mind the differences here from DDR are rather thin.  In DDR, as here, the claimed subject matter had a manual analog that could have been practiced in a bricks and mortar establishment.  Thus, I see this case as yet another demonstrating that DDR Holdings is an outlier.  If DDR is your best (or worse, only) argument to support patent-eligibility, you are on thin ice.

Upcoming Webinar

Functional Claiming After Williamson v. Citrix
December 14, 2017 at 12:00 pm EST
During the webinar, Charles Bieneman will cover strategies for avoiding – or embracing – functional claim interpretations, and for avoiding findings that functional claim language is indefinite. Register

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