In another sign that broad patent claims to software functionality cannot survive Alice’s patent-eligibility test, patent claims directed to automating a sequence of events on the Internet were held invalid under 35 USC § 101 in Content Aggregation Solutions, LLC v. Sharp Corp., Nos. 3:16-cv-00527, -00528, -00529, -00530, -00531, -00533-BEN-KSC (S.D. Cal. Nov. 29, 2016). Not only did the court granted the defendants’ Rule 12 motion to dismiss for failure to state a claim, but the court declined to allow the plaintiff to amend its complaint, saying that all claims were clearly patent-ineligible, and therefore such amendment would be futile.
The patent-in-suit in the present case, US 8,756,155, was directed to using scripts in a handheld device to execute an automated sequence of events on the Internet, e.g., “to obtain bank balances, ongoing actions such as bidding systems, stocks, and the [like].” The court focused on claim 1, which recited in its entirety:
A computing device, comprising:
a handheld housing and processor and display, said display displaying a plurality of different indicators, and wherein at least one of said indicators, when selected with a single actuation, selecting execution of a prestored sequence of actions based on said single actuation that interface with a remote internet site, takes some action on the remote internet site, and returns information from the internet site, all based on said single actuation, wherein said sequence accesses a plurality of different Internet sites, and said information is based on said plurality of Internet sites.
To combat part one of the two-part Alice test, the patent owner “argue[d] that that the patent claims are like those in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016)] because they focus on improvements to apparatuses (computers and computing devices), not processes.” The court rejected this argument, noting that “the focus of the [patent] claims is on the abstract process of retrieving and transmitting data, and that this process is performed on general-purpose, ordinary computer components.” True, claim 1 recites a single command triggering a sequence of actions and returning information, “[b]ut the claim language is silent as to how to actually achieve the collection and transmission of information.”
Step two of the Alice test, whether the claim included limitations “to transform the claim into an inventive concept,” could not save the day for the patent owner. The court made now-familiar comments about how the claims simply used generic and pre-existing computer technology, and did nothing more than automate “human activity using conventional technology,” which “is not an inventive concept.” The court also rejected comparison to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), because “the claims here do not override any routine sequence of events on the Internet.”
Finally, in what might have seemed to the patent owner to be a slightly Kafkaesque twist, the court refused to consider an inventor declaration that attempted to demonstrate “the technological problems in improvements caused by the invention.” Because a motion to dismiss is limited to consideration of “well-pleaded allegations of the complaint, documents incorporated by reference, and judicially noticed facts, the inventor’s “declaration [was] inappropriate to consider.” To be fair, the court then explained why it would not grant leave to amend, i.e., made clear that it felt able to resolve the patent-eligibility question simply by reading the patent specification and claims (which of course are part of the complaint).
Lessons for Practice
One significant aspect of this case is simply reinforcement of the strong message concerning disfavoring functional claim language in patent-eligibility analysis sent by the Federal Circuit on the same day in Apple Inc. v. Amaranth Inc., discussed in a prior post on this blog. And the lesson for practice from this case is the same as stated in that post: broad functional claims are in trouble; do your best to do the impossible and avoid them. Here, it was fatal to claim functionality without any explanation in the patent Specification, much less inclusion of such explanation in the claims, concerning how the functionality was achieved.