Defendants often urge courts to conclude that claim construction is not a prerequisite for deciding patent-eligibility on a defendant’s Rule 12 motion to dismiss. Here is a case in which a magistrate judge reached this conclusion but nonetheless recommended denying the defendants’ motion (without prejudice). Kaavo, Inc. v. Amazon.com Inc., Nos. 15-638-LPS-CJB, 15-640-LPS-CJB (D. Del. Nov. 3, 2016). As the court explained, although the patent claims were drawn to an abstract idea, claim construction was not needed to identify a factual question concerning whether the claims were sufficiently narrow so as to amount to significantly more than the abstract idea.
The patent-in-suit in the present case, U.S. 9,043,751, was a continuation of and shared a specification with, United States Patent No. 8,271,974. Litigation concerning the ’974 patent was in the midst of “the claim construction process regarding certain terms that are very similar (if not identical) two terms found in the ’751 patent.” However, that claim construction was not needed in the present litigation to determine that factual questions existed concerning the scope of the claims, such factual questions being a prerequisite to making a patent-eligibility determination.
The court analyzed claim 11 of the ’751 patent as representative:
A method comprising:
sending, by a computer system, an initialization event based on provisioning information in a single file, the initialization event causing two or more tiers of a cloud environment configuration to be made available to a software application; and
subsequently sending, by the computer system, software application data to the cloud environment configuration, which, upon receipt, causes the software application to begin execution in the available tiers of the cloud environment configuration,
wherein the provisioning information comprises types of servers to launch in each tier, geographic data, security requirement data, pricing preference data, and versioning data.
The court took several pages to conclude that claim 11 is directed to the abstract idea of setting up and managing a cloud computing environment. Interestingly, referring to recent Federal Circuit cases including Enfish, LLC v. Microsoft Corp. and McRO, Inc. v. Bandai Namco Games America Inc., the court lamented the ’751 patent’s failure to provide a more detailed description of how the patent claims solved problems arising in managing cloud computing environments for use by software applications. This failure was enough for the court to distinguish the present case from cases in which claims were found not drawn to an abstract idea.
However, turning to step two of the familiar Alice test, the court explained that the motion should be denied at least because the “initialization event” step made it “more plausible that claim 11 describes a sufficiently specific way of ‘setting up a cloud computing environment.’” (Emphasis in original.) Further, there were disputed issues of fact based on the “wherein” clause concerning “whether claim 11’s method ‘would risk disproportionately tying up the use of the underlying ideas.’” (Quoting Alice.) The court thought it possible that, rather than reciting conventional data manipulation, claim 11 recited a non-conventional configuration of provisioning information.
I offer two takeaways from this case. First, yet again, a court telegraphs that a patent drafter concerned about patent-eligibility should consider the problem-solution approach. This approach is often disfavored in the United States but used in much of the rest of the world to distinguish patent claims from prior art. Many U.S. drafters are concerned that stating a problem to be solved may be a basis for unreasonably narrow claim constructions if and when a patent issues. Alice creates the paradox that the patent drafter may wish to strive for a narrow claim construction – and moreover, should consider whether the likely scope of protection is really being narrowed by taking this approach.
The second take away from this case is, to be a broken record, here is yet another demonstration of the subjectivity of patent-eligibility law under Alice and Mayo. Read claim 11 again, and consider whether the PTAB, or other district courts (even at this early stage of litigation), might have reached a different conclusion.