Patent Claims Found to be Directed to Abstract Idea, but Pass Alice’s “Inventive Concept” Prong

Having found that patent claims were directed to abstract ideas under the first prong of the Alice/Mayo test, a court then found that the claims were patent-eligible under 35 U.S.C. § 101 because the claims recited an inventive concept, satisfying the second prong of the Alice/Mayo test.  The court thus denied the defendant’s  Rule 12(b)(6) motion to dismiss.  Broadcom Corp. v. Sony Corp., No SAVC 16-1052 JVS (JCGx) (C.D. Cal. Oct. 5, 2016).

Claims of U.S. Patent Nos. 6,744,387 and 6,982,663 are directed to methods for “binarization of data in an MPEG data stream.”  Two claims of the ’663 patent are “directed to improving digital video decoding,” and thus were found to be not directed to abstract ideas. However, most of the claims were found to be directed to a “mathematical algorithm,” and thus had to be analyzed to see if the claims also recited an inventive concept to render the abstract idea patent-eligible.

The court found that all claims of the ’387 and ’663 patents directed to an abstract idea also recited an inventive concept sufficient to render the claims patent-eligible.  Some courts have declined to decide patent-eligibility at the pleadings stage, citing a need to wait for claim construction.  Not this court.  Relying on prior cases in which courts had looked to the Specification for an inventive concept, the court here, without admitting it was performing a claim construction, made the striking statement that it “may look beyond the claim elements” to see whether the specification discloses an inventive concept.

Looking to the patent Specifications, the court then found that the claims “attempt to improve a technological issue.”  Specifically, the claims did not merely implement abstract ideas in a general purpose computer, but “instead, the mathematical formula attempts to improve the functioning of compressing and decompressing video, images, and signals.”

Editorial comment: The court may have reached the right result in this case, but the way in which it got there was wrong.  Any holding that rests on an explicit importation of subject matter into the claims from the Specification, as here, runs counter to a basic principle of patent claim construction.  There is a difference between reading claims in light of the specification, and making a decision about the validity of the claims by “look[ing] beyond the claim elements.”

Further, this case points to the slipperiness of trying to distinguish between Alice’s two supposed prongs: (1) whether claims are directed to an abstract idea and (2) if so, whether the claims recite an additional inventive concept.  Under either prong of the Alice test, the analysis seems to really come down to whether the claims recite a “technical” improvement and/or whether the claims are narrow enough to not raise eyebrows.