Patent-Eligibility Not Supported by an Ordered Combination of Generic Technology Elements

Patent claims reciting “buying and selling an item relating to unique subjects” unsurprisingly could not meet the patent-eligibility bar of 35 U.S.C. § 101 and the Alice/Mayo test when the patent owner appealed a lower court’s Rule 12(b)(6) dismissal. VOIT Technologies, LLC v. Del-Ton, Inc.No. 2018-1536 (Fed. Cir. Feb 8, 2019) (non-precedential). The trial court had found the claims of U.S. Patent No. 6,226,412 directed to the abstract idea of buying and selling products without an additional inventive concept. The Federal’s circuit agreed.

Turning first to part one of the applicable patent-eligibility test, whether the claims are directed to an abstract idea, the court stated that the claims of the ’412 patent

are directed to the abstract idea of entering, transmitting, locating, compressing, storing, and displaying data (including text and image data) to facilitate the buying and selling of items.

Like claims in Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016), the court said,the claims here are merely directed to collecting, analyzing, and displaying information. These claims did not improve the functioning of a computer as in Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016). The patent owner could not “explain how employing different formats, as claimed, improves compression techniques or the functioning of the computer.” Rather, the ’412 patent specification made clear it was using generic technology.

The claims did not recite an additional inventive concept to satisfy the second prong of the applicable patent-eligibility test. The patent owner argued that the claims improved the transmission speed of high-resolution data. This argument was to no avail, because, as the Federal Circuit had explained in Intellectual Ventures I LLC v. Capital One Bank (Fed. Cir. 2015), patent claims “directed to ‘improve speed or efficiency inherent with applying the abstract idea on a computer’ are insufficient to demonstrate an inventive concept.” Here, the patent owner had simply “restate[d] the claim limitations and assert[ed] that the claims are directed to a technological improvement without an explanation of the nature of that improvement.”

Moreover, court rejected the patent owner’s “primary counterargument that the District Court erred,” which was that it should have found that the claims recited the “inventive concept of improving client-server communications” in the ordered combination of “batch uploading” and “performing image capture on a non-interactive basis . . . to minimize server participation.” Even if the claims recited this ordered combination, it consisted of steps that “are generic and conventional.” Thus, even when considered as an ordered combination, the claim elements included nothing “not already present when the steps are considered separately.”

Lessons for Practice

Arguing that an ordered combination of elements confers patent-eligibility is a legitimate, and occasionally successful, argument. So make the argument where you must. But be aware that it is also often the last refuge of a patent applicant or patent owner fighting to save abstract claims whose elements are generic and conventional.

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