The Alice Effect: Recent Patent-Eligibility Cases in the District Courts

As this blog and others have noted, the U.S. Patent and Trademark Office reacted quickly to change examination procedures in light of the U.S. Supreme Court's recent decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l.  Moreover, as two recent district court cases suggest, Alice's impact is being felt in ongoing patent litigation.  In DietGoal Innovations LLC v. Bravo Media LLC, No. 13 Civ. 8391 (PAE) (S.D.N.Y. July 8, 2014), and Comcast IP Holdings I, LLC v. Sprint Communs. Co. L.P., No. 12-205-RGA (D. Del. July 16, 2014), two different district courts continued the accelerating trend of granting motions of summary judgment of patent invalidity for failure to recite patent-eligible subject matter under 35 U.S.C § 101.  Both of these cases reinforce the lesson that broad claims, and claims requiring user interaction, are highly susceptible to patent-eligibility challenges.

DietGoal Innovations

The result in this case will shock no one.  The patent at issue in DietGoal Innovations, U.S. 6,585,516, was entitled "Method and System for Computerized Visual Behavior Analysis, Training, and Planning," and claimed "A system of computerized meal planning."  Representative claims 1 and 2 of the '516 patent recite:

1. A system of computerized meal planning, comprising:
a User Interface;
a Database of food objects organizable into meals; and
at least one Picture Menus, which displays on the User Interface meals from the Database that a user can select from to meet customized eating goal.

2. A system of computerized meal planning, comprising:
a User Interface;
a Database of food objects; and
a Meal Builder, which displays on the User Interface meals from the Database, and wherein a user can change content of said meals and view the resulting meals' impact on customized eating goals.

The court characterized the claims as directed to a "computer program that allows the user to create meals from a database of food objects according to his or her preferences and dietary goals, to change those meals by adding or subtracting food objects, and to view the dietary impact of changes to those meals on a visual display."  In other words, the patent claimed "conventional and quotidian tasks" related to meal planning.  As in Alice, the claims here offered no additional inventive concept that would render them patent-eligible.  Further, there was no functional difference between system and method claims.  And finally, and notably, the court explicitly stated that claim construction was not necessary, because the claims were invalid under any reasonable construction.

Comcast IP Holdings

The defendant in this case, Sprint, had moved for summary judgment of invalidity under 35 U.S.C § 101 for claim 21 of U.S. 6,873,694, one of four asserted patents.  Claim 21 of the '694 patent recites:

21. A telephony network optimization method, comprising:
receiving a request from an application to provide to the application service on a telephony network; and
determining whether a telephony parameter associated with the request requires acceptance of a user prompt to provide to the application access to the telephony network.

The Court found that claim 21 encompassed the simple steps of "(1) Receiv[ing] a request; [and] (2) Determin[ing] whether that request requires a user prompt," and as such was directed to the abstract idea "of determining if a decision is required."  The court rejected that plaintiff's argument that its patent was "quintessentially a telecommunications patent," and thus was "grounded in a particular technological context."  The Court explained that Claim 21 included no limitations "beyond the abstract idea, other than vaguely referring to a 'telephony network' and an 'application.'"  Claim 21 thus failed to recite a practical application with concrete steps.

The Court mentioned Alice only at the end of its opinion (which one suspect was largely written before Alice was decided), saying that Alice provided further support for the Court's decision even though it had not "substantively changed" any of the rules the Court had applied.