Technological Environment Will Not Save Patent-Eligibility Under Alice

A recent decision under 35 U.S.C. § 101 by Judge Robinson of the District of Delaware is notable for two things: (1) the invalidation of patent claims drawn to a technological environment, and (2) the frank acknowledgment of the frustrating murkiness of patent-eligibility law in the wake of Alice Corp. v. CLS Bank.  Parus Holdings, Inc. v. Sallie Mae Bank, Civ. Nos. 14-1427-SLR, 14-1428-SLR, and 14-1429-SLR (Oct. 8, 2015).  The opinion, or at least the below excerpts, is worth reading as we all grapple with the problem that “to recognize and articulate the requisite degree of specificity . . . that transforms an abstract idea into patent-eligible subject matter is a challenging task.”

Claims of the patents-in-suit, U.S. Patent Nos. 8,098,600; 8,843,120; 8,838,074; and 8,843,141, a chain of continuations based on a common specification, were drawn to “a unified messaging service which will be accessible from any standard communication device (telephone, computer or [I]nternet), and will give the user intuitive voice command of personal, professional and public information.”  The defendants characterized the representative claim is focusing “on the automated tasks of (1) receiving messages via a phone or Internet connection and then transmitting those messages to a subscriber by phone or Internet; and (2) receiving a message from a subscriber by phone or Internet and then forwarding that message based on rules established by the subscriber.”  Judge Robinson responded to this characterization by noting that “[a]lthough at the time of issuance the challenges addressed by the patents-in-suit undoubtedly were considered to be Internet-centric, under the current analytical paradigm (i.e., in hindsight), the fact that there are pre-Internet analogs to the patent claims suggests methods of organizing human (business) activity and, therefore, an abstract idea.”

The plaintiffs contended that the claims nonetheless recited a patentable inventive concept because they solved “problems that specifically arise in communications technologies, and relied “on specialized components and hardware.”  The plaintiffs moreover argued that the claims’ satisfaction of the machine-or-transformation test meant the Alice bar was passed.  The claims, the plaintiff contended, were not broadly preemptive of “managing business communications” because it was “possible to continue managing business communications using non-integrated, independent communication systems,” and the claims required “speaker-independent” and “natural” speech recognition.

The court disagreed.  Neither the claim language nor the specification supported “plaintiff’s characterization of the computer components as specialized.”  Further, the claimed steps did not “provide sufficient specificity to negate the risk of preemption.”  The claims simply used known technologies to allow a subscriber to manage the communications networks.  The court was similarly unpersuaded that the claims performed any transformation, e.g., of communications, to meet the machine-or-transformation test.

The court thus granted the defendants’ motion to dismiss.  Perhaps most notable about this opinion, however, was the court’s frank acknowledgment of the mess that is present-day Section 101 patent-eligibility analysis:

In reviewing post-Alice cases such as DDR [Holdings] and Intellectual Ventures, the court is struck by the evolution of the § 101 jurisprudence, from the complete rejection of patentability for computer programs to the almost complete acceptance of such, to the current (apparent) requirements that the patent claims in suit (1) disclose a problem “necessarily rooted in computer technology,” and (2) claim a solution that (a) not only departs from the “routine and conventional” use of the technology, but (b) is sufficiently specific so as to negate the risk of pre-emption. See DDR, 773 F.3d at 1257; Intellectual Ventures, 792 F .3d at 1371. In other words, even though most of the patent claims now being challenged under § 101 would have survived such challenges if mounted at the time of issuance, these claims are now in jeopardy under the heightened specificity required by the Federal Circuit post-Alice. Moreover, it is less than clear how a § 101 inquiry that is focused through the lens of specificity can be harmonized with the roles given to other aspects of the patent law (such as enablement under§ 112 and non-obviousness under§ 103), especially in light of the Federal Circuit’s past characterization of § 101 eligibility as a “coarse” gauge of the suitability of broad subject matter categories for patent protection. Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010). Given the evolving state of the law, the § 101 analysis should be, and is, a difficult exercise.  At their broadest, the various decisions of the Federal Circuit would likely ring the death-knell for patent protection of computer-implemented inventions, a result not clearly mandated (at least not yet). On the other hand, to recognize and articulate the requisite degree of specificity – either in the equipment used or the steps claimed – that transforms an abstract idea into patent-eligible subject matter is a challenging task.

The court then continued with an interesting comment about when patent-eligibility of claims can be considered at the pleading stage, and when a motion for summary judgment is more appropriate:

In trying to sort through the various iterations of the § 101 standard, the court looks to DDR as a benchmark; i.e., the claims (informed by the specification) must describe a problem and solution rooted in computer technology, and the solution must be (1) specific enough to preclude the risk of pre-emption, and (2) innovative enough to “override the routine and conventional” use of the computer. DDR, 773 F.3d at 1258-59. The pre-emption concern is generally amenable to review in the context of a motion to dismiss or for judgment on the pleadings. The second requirement, which may well involve issues of fact relating to the state of the art in the technological environment involved, is more appropriately addressed after discovery in the context of a motion for summary judgment.