In TS Patents LLC v. Yahoo! Inc., No. 17-cv-01721-lhk, (CAND Sept. 1, 2017) the Court applied the two-step Alice analysis and granted Yahoo’s motion to dismiss an infringement suit from TS Patents, finding claims from four asserted patents to be invalid under 35 U.S.C. §101.
TS Patents alleged that Yahoo infringed US 9,280,547, (the ’547 patent), US 8,799,473, (the ‘473 patent), US 8,713,442, (the ‘442 patent), and US 8,396,891, (the ‘891 patent).
The Court’s analyses of the four patents was similar. The analysis of claim 9 of the ‘442 patent is presented here as representative.
Claim 9 recites:
A server in a collaboration system supporting virtual presentation between a plurality of user, the server comprising:
at least one hardware processor, and
program code, which, when executed by the at least one hardware processor, causes the server to:
display a first user interface comprising metadata of files and folders, residing in the server or in at least one computing device, on a first end-user device to allow a first user selecting one selected file or one selected folder from the metadata displayed and requesting the metadata displayed and requesting the metadata of the selected file or folder to be posted to a second user interface;
store the metadata information, but not content, of the selected file or the selected folder according to the request for the posting received from the first end-user device; and
display to a second user the stored metadata of the selected file or the selected folder including to display a graphic indicator of the selected file or folder in the second user interface on a second end-user device to allow the second user access to the content of the selected file or selected folder through the stored metadata displayed in the second user interface.
Yahoo took the position that claim 9 is directed to the abstract idea of “providing a preview of a file or folder and then allowing the person to access the file or folder.” TS Patents argues that claim 9 is instead directed to “the dynamic relocation of files and folders over a network, and that this constitutes a specific improvement to the computer technology of sharing information over a network.”
The Court started its analysis by determining what the “character as a whole” of the claim is “directed to.” (Elec. Power). The Court agreed with Yahoo and found that claim 9 is directed to “preview-based file or folder sharing.” The claim, put simply, addresses a first user sharing a file or folder with a second user by sending its metadata.
The Court next determined, based on step one in the Alice analysis, that claim 9 was directed to an abstract idea. One guidepost a court may consult in step one is whether claims have an analogy in the brick-and-mortar world. Here, the Court analogized the file sharing in claim 9 to two researchers sharing books. A first researcher may physically send books to a second researcher. Alternatively, the first researcher may simply send a list of book titles, and the second researcher can procure copies. Claim 9 is like the second option.
TS Patents further argued that claim 9 is directed to improving computer technology - specifically “enabl[ing] the fast and easy exchange of files between users.” The Court disagreed, stating “there are not computer or networking technologies, such as algorithms, data structures, or hardware components, which claim 9 specifically improves.”
Moving to the second step of the Alice analysis, the Court found that claim 9 did not recite an inventive concept that “is sufficient in practice to ensure that the patent in practice amounts to sufficiently more than a patent upon the [ineligible concept] itself.” (Alice)
TS Patents argued that claim 9 “provide[s] the useful technology of fast and easy posting and un-posting over a network by transmitting and displaying only the metadata of the file or folder.” The Court pointed out, however, that claim 9 did not recite a specific technology or concrete technical solution. Again citing Elec. Power, the Court noted that “[t]here is a critical difference between patenting a particular concrete solution to a problem and attempting to patent the abstract idea of a solution to the problem in general.”
The Court found representative claim 9, and all other claims of the ‘442 patent invalid as being directed to an abstract idea. Based on similar analyses, the Court also invalidated the claims of the ‘547 patent, ‘473 patent and the ‘891 patent.
Lessons for Practice
Enfish and McRO notwithstanding, patent eligibility requires more than “the abstract idea of a solution to [a] problem.” For patent eligibility, including details of improvements to algorithms, data structures, hardware components, etc. in the specification and claims of patent applications will put you in a far better position to win the “technological improvement” argument.