Considering claims of various patents-in-suit, a court drew a patent-eligibility line at the point where claims could be practiced without a computer, invalidating claims of two patents, but upholding claims of a third, under 35 U.S.C. § 101. Intellectual Ventures I LLC v. Symantec Corp., no 1:10-cv-01067, Intellectual Ventures I LLC v. Trend Micro Inc., no. 1:12-cv-01581 (D. Del. April 22, 2015). The decision came on summary judgement motions amidst a complicated procedural posture, but otherwise followed the now familiar two-part “abstract idea” test of Alice Corp. Pty. Ltd. v. CLS Bank Int’l. and Mayo Collaborative Servs. v. Prometheus Labs., Inc.
Claims of U.S. patent no. 6,460,050, drawn to a “method for identifying characteristics of data files,” were patent-ineligible. The claims here were similar to claims in CyberSource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011), being “directed to receiving information related to a file (an identifier) from a querying computer, characterizing the file based on the identifier and other stored identifiers, and communicating a result of the characterization back to a querying computer.” Rejecting an argument based on DDR Holdings, LLC v. Hotels.com, L.P., the court explained that, in its view, the claims were directed to “a generic computer implementation of abstract ideas: receiving identity information, comparing it to other information, and communicating results based on the identifying information.” Further, the court considered evidence showing that the claimed steps could all be performed by a human. The claims recited a generic computer implementation, and lacked an additional inventive concept.
Claims of U.S. patent no. 6,073,142, drawn to a “post office for receiving and redistributing e-mail messages on a computer network,” and processes relating to delivering and reviewing e-mails, were likewise held patent-ineligible. The court found that the claims either required a generic computer implementation or recited fundamental mailroom business practices. Thus, the claims were “directed to an abstract idea of implementing well-known post office functionality using a computer.” The claims did not recite a sufficient additional inventive concept; even if the claims did not “preempt the entire field of email filtering,” the court agreed that “the asserted claims of the’ 142 patent disproportionately tie up use of the patent’s underlying ideas.”
However, claims of U.S. patent no. 5,987,610 survived the defendants’ patent-eligibility challenge. The patent claims recited a “virus screening method.” However, the claims were directed to more than the abstract idea of “screening information.” Rather, “the asserted claim specifically recites a computer virus, which has computer-centric implications that cannot be abstracted away so broadly.” The claims of the ’620 patent included elements that did not make sense outside of a computer context.
An interesting feature of the court’s detailed opinion is that, for each patent, it included a chart of the patent claim elements at issue, and the allegedly routine or fundamental steps mapped to the patent claim elements. In other words, the court analyzed the claims element-by-element to look for some innovation that could save the claims form being an abstract idea. The court did not, then, follow the traditional invalidity analysis that looks at “the claim as a whole.”
Thus, the take-away from this decision for both plaintiffs and defendants might be to consider whether claim charts and an element-by-element analysis would support patent-eligibility or patent-ineligibility arguments. And certainly, this decision illustrates that courts are willing to make subtle distinctions, and perform detailed analysis, in arriving at patent-eligibility decisions.