USPTO Notice of Allowance Post-Alice Does Not Prevent Finding of Patent-Ineligibility in District Court

In holding claims directed to a computer search system patent-ineligible under 35 U.S.C. § 101, Delaware Magistrate Judge Thynge rejected an argument that the patent should survive Alice scrutiny because a very similar continuation application had been allowed after Alice, and after invalidity contentions were submitted to the USPTO in the continuation application. Collarity, Inc. v. Google, Inc., No. 11-1103-MPT (D. Del. Nov. 25, 2015). The court therefore granted summary judgment of invalidity of claim of U.S. Patent No. 7,756,855.

Google, the defendant, alleged that the patent claims were directed to the abstract idea of refining search queries by substituting some word in the query for others. The court agreed with Google, rejecting the argument of the plaintiff, Collarity, that the claims were directed to a computer improvement. The court’s analysis followed the now-familiar pattern of noting that the claims could be performed as mental steps, and with pen and paper. There was no inventive concept, the claims were implemented on a generic computer. The court rejected the plaintiff’s argument based on DDR Holdings, LLC v. Hotels.com, L.P., that the claims were directed to solving a problem in a computer. The problem “of refining a search query is a problem humans have long dealt with, including before the advent of the Internet.”

Before concluding, Judge Thynge rejected Collarity’s argument that “the post-Alice issuance of a continuation patent similar to the ‘855 patent confirms the validity of the asserted claims of the ‘855 patent.” In prosecuting the continuation, “Collarity disclosed to the Patent Office all prior art references that Google relied on, as well as Google’s invalidity contentions, and a redacted version of its expert report.” A “Corrected Notice of Allowance” had been provided after the Alice case was decided, which, Collarity argued, demonstrated “that the Patent Office believes these claims qualify for patent protection.”

The court was unpersuaded. Google had not raised its Section 101 arguments in the invalidity contentions that Collarity submitted to the USPTO. And regardless, the Court rejected Collarity’s apparent “position . . . that any patent issued post-Alice would be inoculated from invalidity under Section 101.” It was the duty of the District Court to determine, as a “threshold inquiry,” and evidently without a presumption of validity, the question of patent-eligibility under Section 101.