A court found that claims of two patents were ineligible under 35 U.S.C. §101 and the Alice/Mayo test because the claims were all “directed to the same economic practice: the idea of presenting discounts or offers for goods and services based on certain criteria, such as a user’s location.” Valentine Communications, LLC v. Six Continents Hotels, Inc., No. 1:18-cv-1815-WMR (N.D. Ga. Jan. 9, 2019). The court thus granted the defendant’s Rule 12(b)(6) motion to dismiss the plaintiffs complaint alleging infringement of U.S. Patent Nos. 8,567,672 and 8,590,785.
Claim 18 of the ’672 patent recites a computer-implemented “method for providing a discount to a user associated with a user device.” Claim 1 of the ’718 patent recites a mobile device that “receives an offer for the product or service in response to the transmission of the subset of purchasing data and in accordance with a search function.”
The plaintiff pointed to claim recitations of hardware to support their argument that the claims were directed to more than an abstract idea. But the court thought that, when the conventional hardware elements were “stripped away” from the claims, all that remained were a “fundamental economic practice.”
Unfortunately for the plaintiff, the patents themselves more or less explicitly stated that the claims embodied only generic, conventional computing technology:
The ’785 Patent specification states “all or portions of the subject innovation may be implemented as a method, apparatus or article of manufacture using standard programming and/or engineering techniques to produce software, firmware, hardware, or any combination thereof to control a computer to implement the disclosed innovation.”
The ’672 patent was not quite so clear, but similarly disclosed at best generic computing technology. Thus, at best, “the claimed components provide a forum in which to practice the abstract idea of buying and selling based on certain criteria.” And because the patent specifications were so clear that the claimed technology was at best conventional, there was no factual question under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) or Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354 (Fed. Cir. 2018) about whether there was a significant innovation under part two of the §101 test.
Lessons for Practice
Ironically, the patent drafters here took pains to support their claims by pointing to use of conventional technologies to implement the claimed subject matter. The patents in this case were drafted in 2003 and 2004 – well before anyone, in the United States, at least, worried about claiming a “technical” solution. Times have changed, and this case reminds today’s patent drafter that, for computer-related inventions, it is important to emphasize technical problems and technical solutions in drafting patent specifications and claims.