Recent § 101 jurisprudence regarding tech inventions can be distilled down to two words: be specific. That’s a problem for patents in the tech space, because they are not specific at all, claiming inventions using broad functional language. Prior to Alice, for inventions where the function was novel but the components were not, a claim could recite an invention in terms of what the components did. Post-Alice, claims expressed in purely functional terms are likely to be held invalid under § 101 if the patent is litigated. This is exactly what happened to Affinity in Affinity Labs of Texas v. Amazon.com, Inc.
Affinity sued Amazon, alleging that the marketing of Amazon’s music systems infringed U.S. Patent No. 8,688,085. The district court and the Federal Circuit treated Claim 14 as representative. Rather than recite the lengthy Claim 14, we refer to the description provided by the Federal Circuit: “a network-based media system with a customized user interface, in which the system delivers streaming content from a network-based resource upon demand to a handheld wireless electronic device having a graphical user interface.”
The magistrate judge and the district court agreed that the ‘085 patent was directed to an abstract idea: “delivering selectable media content” and “playing [that content] on a portable device.” It was also found that the individual components of the media system, the “network based media system” and the “non-transitory storage medium” were a generic database and memory, respectively. Affinity argued that the “user interface” limitation provided the inventive concept, but the magistrate judge disagreed because neither the claim nor the specification identified “any specific technology or instructions that explain how the device can do what it purports to do or direct the practitioner how to carry out the claims.”
Applying step one of the Alice/Mayo analysis to Claim 14, the Federal Circuit agreed with the district court. The “purely functional nature of the claim confirm[ed] that it is directed to an abstract idea.” The court emphasized that neither the claims nor the specification disclosed a specific means for performing the claimed function—streaming content to a wireless device.
Affinity argued that the embodiments of the “customer user interface” listed in the specification, including a radio dial, a playlist, and targeted advertising based on demographic information provided by the user, were means for performing the claimed function as required under § 101. The court was not persuaded. Citing Intellectual Ventures v. Capital One Bank, where the court held that “customizing information based on . . . information known to the user” was an abstract idea, the court concluded that Claim 14 was similarly directed to an abstract idea.
As to the second step of the analysis, the court did not find anything in the claims or specification constituting a “concrete implementation of an idea” (inventive concept). The claims did not disclose the “significantly more” required by Alice by failing to recite, for example, a solution for a technological problem; an improvement in the functioning of a computer or network; or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The individual components, namely the network-based media system, the non-transitory storage medium, and the user interface, were claimed in purely functional, general terms: “[t]he features set forth in the claims are described and claimed generically rather than with the specificity necessary to show how those components provide a concrete solution to the problem addressed by the patent.” The court found no concrete implementation of the idea in the specification either, citing boilerplate language that the media system was not limited to any specific configuration and the statement that the user interface could be customized in a plurality of ways as examples of the vagueness of the disclosure.
A cursory reading of this case would indicate that the lack of concrete implementation of the idea should really be an indefiniteness (§ 112) issue rather than a § 101 issue. The invention is arguably “new and useful” as § 101 requires; the ‘085 patent was issued in 2014, but the priority date was 2000, a time when wireless streaming of media was not “routine, conventional, or well-known.” In light of the fact that the court remains committed to treating this as a § 101 issue, then practitioners would be wise to avoid purely functional claiming as it is a red flag to the courts. Practitioners should also provide a reasonable amount of detail in the specification, describing inventions as technological solutions to technological problems, if possible.