PMC Signal Processing Patents Not Ineligible Under 35 U.S.C. § 101

​ The magistrate judge recommended denying defendant's motion to dismiss on the ground that plaintiff’s signal processing patents encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "[Defendant] argues that the asserted claims of the [first] Patent are 'simply directed to a generic way of communicating information to determine which television program to display.' The Court disagrees. The [first patent's] claims are directed to overcoming problems specific to the distribution of streaming digital television programming and other digital content over computer networks. . . . [T]he claims of the [second] patent are directed at a receiver station that receives and processes signals. The particularized elements of those claims are similar to the claim elements in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)]. . . . [T]he [third patent's] claims address a specific technological problem rooted in signal transmission and processing. . . . Similarly, the [fourth patent's] claims are directed to a process of matching a 'signal processing scheme' to the variable format of a received digital signal to output television programming. Finally, the Court finds that the [fifth patent's] claims are directed to a method of handling information transmissions whose variable-length data must first be decoded before the data can be used to create video images. . . . The asserted claims recite patentable subject matter as defined by precedent interpreting § 101."

Personalized Media Communications, LLC v. Funai Electric Co., Ltd., 2-16-cv-00105 (TXED February 22, 2017, Order) (Payne, MJ)

Digital Media Synchronization Patents Not Invalid Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s digital media synchronization patents encompassed unpatentable subject matter because the claims were not directed toward an abstract idea. "The claims, like those in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] and [McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016)], are directed on their face to an improvement to computer functionality: a more-efficient mechanism for synchronizing data between systems connected to a network by updating only changed data (or 'difference information'), rather than recopying all information. . . . As the specifications explain, the claims are directed to improving the manner in which computers synchronize data between devices connected to a network, by making that process faster, reducing the amount of bandwidth and storage space used, enabling synchronization across different data formats, and enabling synchronization without requiring devices to be physically connected."

Synchronoss Technologies v. Dropbox Inc, 3-16-cv-00119 (CAND December 22, 2016, Order) (Gilliam, USDJ)

RFID Tracking Patents Ineligible Under 35 U.S.C. § 101​

The court granted defendant's motion for judgment on the pleadings that the asserted claims of plaintiff’s RFID tracking patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "According to [plaintiff], because all of the asserted claims 'require specialized physical hardware components as well as software,' the hardware elements necessarily make the claims 'in better standing than those found eligible in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)].'. . . While both representative claims require physical components -- the RFID 'transponder,' 'reader,' and 'antenna' -- the specification makes clear that the recited physical components merely provide 'an environment in which to carry out the abstract idea.'. . . The specification does not address how the RFID technology itself is improved: it does not describe a new or improved RFID transponder, a new or improved RFID reader, or a new or improved RFID antenna. . . . Here, the focus of the claims is on certain abstract process for which computers are invoked merely as a means to achieve the ends. While the RFID technology employed by the invention was a rapidly developing technology at the time of the invention, the use of a conventional or generic computer in a nascent environment does not make the claims any less abstract."

Automated Tracking Solutions, LLC v. ValidFill, LLC et al, 1-15-cv-04348 (GAND December 21, 2016, Order) (Duffey, USDJ)

Digital Archiving Patent Ineligible Under 35 U.S.C. § 101​

The court granted defendant's motion for summary judgment that plaintiff's digital archiving patent was invalid because the asserted claims encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "At their core, these four steps describe instructions for using a generic computer to collect, organize, compare, and present data for reconciliation prior to archiving. . . . [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] did not go so far as to hold that any method purporting to improve computer functionality is patent-eligible. . . . Moreover, the decision did nothing to unsettle past Federal Circuit case law holding that claims calling for the addition of 'conventional computer components to well-known business practices' are drawn to an abstract idea, even when those claims purport to improve computer functionality through increased speed or efficiency. Here, the claims in the [patent] purport to improve digital archiving by 'promot[ing] efficiency,' 'achiev[ing] object integrity,' and 'reduc[ing] turnaround time and costs.' These types of generic technological improvements can result from virtually any computer implementation of conventional business methods. The Court therefore disagrees with [plaintiff] that its claims are directed to the kinds of specific, concrete, nonconventional improvements that made the claims in Enfish patent-eligible."

Berkheimer v. Hewlett-Packard Company, 1-12-cv-09023 (ILND December 12, 2016, Order) (Lee, USDJ)

Enfish is Not an Intervening Change of Law Sufficient to Amend Judgment of Invalidity Under 35 U.S.C. § 101​

The court denied plaintiff's motion to amend an earlier judgment that the asserted claims of plaintiff's GPS patent were invalid for lack of patentable subject matter and rejected plaintiff's argument that Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. May 12, 2016), was an intervening change of law. "Enfish does not stand for the proposition that improvement to computer functionality is always sufficient to satisfy step one of [Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)]. . . . Enfish cautioned against describing claims at a high level of abstraction and untethered from the language of the claims. But in doing so, Enfish merely affirmed the existing law that claims are to be considered as a whole in order to evaluate what they are directed toward. That a court should not characterize an invention at too high of a level of abstraction, and should consider as a whole what a claim is directed toward, has previously been articulated in prior § 101 decisions, and does not present a change in the law. . . . [A]t the most, Enfish and subsequent cases suggest 'that there is considerable overlap between step one and step two,' but that 'whether the more detailed analysis is undertaken at step one or at step two, the analysis presumably would be based on a generally-accepted and understood definition of, or test for, what an 'abstract idea' encompasses.'"

Rothschild Location Technologies LLC v. Geotab USA, Inc., 6-15-cv-00682 (TXED December 5, 2016, Order) (Schroeder, USDJ)

Web Based Communication Patent Ineligible Under 35 U.S.C. § 101​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s web based communication patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff] argues that that the patent claims are like those in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016)] because they focus on improvements to apparatuses (computers and computing devices), not processes. [Plaintiff] contends that '[p]rior to the [patent-in-suit], no computer existed that had the same capabilities as those claimed in the [patent].'. . . [P]atent eligibility does not depend on the form of the claim. . . . The language of the claims and specification make clear that the focus of the claims is on the abstract process of retrieving and transmitting data, and that this process is performed on general-purpose, ordinary computer components. . . . [T]he claim language is silent as to how to actually achieve the collection and transmission of information. There are no specifics about what those pre-stored sequences of actions are, what action is taken on a remote Internet site, how information is accessed and returned from the Internet site, or what information is returned. . . . The patent claims a process that humans have long performed, but implements it on a generic Internet-connected device used in its ordinary capacity. This is not sufficient to be deemed non-abstract."

Content Aggregation Solutions LLC v. BLU Products, Inc., 3-16-cv-00527 (CASD November 29, 2016, Order) (Benitez, USDJ)

Video Content Distribution Patents Invalid Under 35 U.S.C. § 101​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s video content distribution patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff] argues that, like [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)], the claims improve computer functionality. But that is not the case. Here, claim one of both the patents covers a method of receiving video data, limited to a certain length and frame rate, from a camera, operated by a user, transcoding the video data, and transferring the video data for distribution. In short the claims each cover the process of automatically transcoding user recorded video files to a predetermined format that is suitable for a television broadcast or publication on the internet. The Federal Circuit has repeatedly found similar claims directed toward gathering, processing, and outputting information are abstract. . . . [T]hese claims do not improve the functioning of the computer itself, they facilitate uploading video into a certain format, a process that was previously possible without the patents at issue. Thus the claims merely facilitate uploading video."

Youtoo Technologies LLC v. Twitter Inc., 3-16-cv-00764 (TXND November 10, 2016, Order) (Godbey, USDJ)

Personalized Nutrition Information Patent Deemed Unpatentable Under 35 U.S.C. § 101

In a final written decision, the Board found claims of a patent directed to a computerized method and system to provide personalized nutritional information to consumers unpatentable under 35 U.S.C. § 101. "Relying on the distinction made in [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)] between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on 'abstract ideas,' the court in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)] clarified that a relevant inquiry in step one of the Alice framework is to ask whether the 'focus' of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool. . . . [T]he challenged claims in this case, contrary to Patent Owner’s assertion, are not directed to a barcode entry device, personal data related to the individual, and prestored nutritional data, because the claims are not focused on any specific improvement in the functioning of a barcode reader or a nutritional database. . . . [W]e determine that . . . the focus of the challenged claims is on collecting and correlating information, a process that qualifies as an 'abstract idea' for which conventional components, such as a barcode reader, data input devices, a processor, and a nutritional database, are merely invoked as tools used in their ordinary and conventional manner."

Petition for Covered Business Method Patent Review by Google Inc., CBM2015-00071 (PTAB August 18, 2016, Order) (Chung, APJ)

Early 35 U.S.C. § 101 Eligibility Challenge Denied in Light of Enfish

The court denied defendant's motion to dismiss plaintiff's amended complaint on the ground that plaintiff’s identity protection patent encompassed unpatentable subject matter because claim construction had not occurred. "The Court granted the motion to dismiss [the original complaint] on the grounds that the patents are invalid because they are drawn to an abstract idea. . . . The Court is persuaded by the additional briefing that it should not make a final decision about patent eligibility until after claim construction has occurred. Defendants contend that 'it is the claims — not the specification or figures — that matter.' However, the Federal Circuit [in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] recently clarified the two-step process of determining whether a patent’s subject matter is eligible for patent protection. It described 'a stage-one filter to claims, considered in light of the specification, based on whether 'their character as a whole is directed to excluded subject matter.''. . . In its decision, the Federal Circuit reversed the district court. This reversal was largely based on the Federal Circuit's finding that 'the district court oversimplified . . . the claims and downplayed the invention's benefits.' By first allowing claim construction, the Court hopes to avoid that situation in this case."

Mantissa Coporation v. Ondot Systems, Inc. et al, 4-15-cv-01133 (TXSD August 11, 2016, Order) (Ellison, USDJ)

Enfish Does Not Require Reconsideration of Earlier Unpatentability Decision

The court denied plaintiff's post-Enfish motion to reconsider an earlier order granting defendants' motion for judgment on the pleadings that plaintiff's underground location patent was invalid for lack of patentable subject matter because Enfish did not alter the court's previous analysis. "[U]nlike the patent-eligible claims at issue in [Enfish, LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016)], which were 'directed to specific implementation of a solution to a problem in the software arts,' Claim 1 of the [patent-in-suit] is directed to patent-ineligible subject matter because the technological solution such claim purports to advance is the process of gathering and saving information of a specified kind, related to a locate operation, and 'not any particular assertedly inventive technology for performing those functions.'"

Certusview Technologies, LLC v. S & N Locating Services, LLC et al, 2-13-cv-00346 (VAED August 10, 2016, Order) (Davis, USDJ)

BIOS Security Patent Invalid Under 35 U.S.C. § 101 Despite Enfish

Following the Federal Circuit's decision in Enfish, LLC v. Microsoft Corp., --- F.3d ---- (Fed. Cir. May 16, 2016), the court denied plaintiff's motion to reconsider an earlier order granting defendants' judgment on the pleadings that plaintiff's BIOS security patent encompassed unpatentable subject matter. "As the [patent-in-suit] acknowledges, the [patent] does not disclose any of those mathematical algorithms that actually represent an application of the 'abstract' idea of securing the BIOS through authentication, nor a new concrete means of applying those algorithms. Unlike the patent in Enfish which apparently disclosed a new method of building a database, here, no aspect of the [patent-in-suit] does enough to remove to claims from the realm of the abstract. . . . The [patent] purports to simply combine the 'conventional' system of security through the use of private/public keys with the conventional computer component of a BIOS. As discussed extensively in [the prior] Order, this is insufficient to elevate the at-issue claims to a concrete application of the abstract concept of authentication." Kinglite Holdings Inc. v. Micro-Star International Co. Ltd. et al, 2-14-cv-03009 (CACD July 6, 2016, Order) (Selna, J.)

Data Security Patent Unpatentable Under 35 U.S.C. § 101 Despite Enfish

In a final written decision, the Board found claims of a patent directed to a data security system unpatentable under 35 U.S.C. § 101. "[W]e are persuaded by Petitioner that the claims are directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied. . . .The databases and access rules recited in claims 1 and 8 perform their normal functions and achieve expected results. The protection of data in a database at the data element level still comports with the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied. . . . We are also mindful of recent admonishments by the Federal Circuit that the first step of our analysis should not be pro forma when the claims are directed to improvements in software. See Enfish, LLC v. Microsoft Corp., No. 2015-1244 , 2016 WL 2756255, at *4 (Fed. Cir. May 12, 2016) . . . We are not persuaded, however, that the instant claims are directed to a specific improvement to the way computers operate."

Petition for Covered Business Method Patent Review by Informatica Corporation, CBM2015-00021 (PTAB May 31, 2016, Order) (Turner, APJ)

Computer Memory Hierarchy Patent Invalid Under 35 U.S.C. § 101 Despite Enfish

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s computer memory hierarchy patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[T]he claims are directed to the abstract idea of categorical data storage. Humans have categorized data for many years. . . . This is an 'undisputably well-known' practice that 'humans have always performed.' . . . Courts have routinely found that similar claims are directed to abstract ideas. . . . Plaintiff relies on the Federal Circuit's recent decision in [Enfish, LLC v. Microsoft Corp., (Fed. Cir. May 12, 2016)] for the proposition that claims which 'improve the functioning of a computer itself' are patent eligible. . . . [H]owever, the question of whether a given claim 'improve[s] the way a computer [works]' is not, by itself, determinative. . . . [Enfish] described the central question as 'whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool.' . . . Enfish is thus best understood as a case which cautions against oversimplification during step one of Mayo/Alice, rather than a case which exempts from § 101 scrutiny all patents which purport to improve the functioning of a computer. . . . Here, there is no analog to the 'specific type of data structure' that was found sufficiently un-abstract in Enfish. Although the claims 'touch[] on what is asserted to be an improvement to . . . computer capabilities,' they are not 'directed to a 'specific' or 'concrete' improvement in the way software operates,' but instead are 'directed to . . . the mere idea of' categorical data storage."

Visual Memory LLC v. NVIDIA Corporation, 1-15-cv-00789 (DED May 27, 2016, Order) (Andrews, J.)