Not all abstract ideas fall under the scrutiny of 35 USC 101. Over the past year, the CAFC has chipped away at the granite façade that is 35 USC 101 issuing several opinions finding abstract ideas to be patent eligible under the Alice framework (Enfish, Bascom and MRCO). In such cases, the court has identified factors that distinguish patent eligible subject matter from an abstract idea. One such factor is a determination that the invention as claimed improves the functionality of a computer itself.
The CAFC has also discussed the preemption doctrine as it applies to Section 101, but this doctrine has not been routinely applied in a direct manner. Each of these issues were front and center in Evolutionary Intelligence, LLC. v. Sprint Nextel Corporation (WL 655442, Fed. Cir. 2017).
District Court Analysis
Evolutionary Intelligence, LLC (EI) owns U.S. Patents 7,010,536 and 7,702,682. The EI patents describe systems and methods that allow “computers to process data that are dynamically modified based upon external-to-the-device information, such as location and time.”
The EI patents (each under the same logic) were held invalid under 35 USC 101. As an initial matter, the district court framed the 101 inquiry with an emphasis on preemption, which may have shaped how the court viewed the application of the Alice framework. Under step 2A of the Alice inquiry, the court held that the claims were directed to “age-old forms of information processing,” such as those used in “libraries, businesses, and other human enterprises with folders, books, time-cards, ledgers, and so on” and as such were abstract ideas.
Under step 2B of the Alice inquiry, the court found each step of the method and the various components required to implement the method to be routine and conventional. EI conceded the point, but argued the claims, when viewed as an ordered combination, improved the function of a computer itself by overcoming limitations inherent in the static information model of computerized data processing by allowing “computers to process containerized data in a way that results in dynamic modifications in order to improve future processing efforts by computers” (citing DDR Holdings).
The court disagreed and held that the problem solved by the EI patents, failure to dynamically update data structures over time and by location, or based on search history, was not a problem unique to the computing or even a computing problem, but is simply “an information organization problem.” In essence, because the problem to be solved could be found in a non-computer field, the court dismissed the solution provided by the ordered combination of the claims. It could be argued that the same could be said of the solution reached in DDR Holdings and Enfish, where the problems addressed (customer retention and data organization, respectively) could also be said to be present in the prior art.
The district court stated that an inventive feature question (which read as being equivalent to improving the functionality of a computer) under Section 101 asks whether the patent adds something to the abstract idea that is “integral to the claimed invention.” In making this inquiry, the court noted it was important to “distinguish between claim elements that are integral to the claimed invention from those that are merely integral to the abstract idea embodied in the invention.” This approach arguably is in conflict with the Alice mandate to examine the claim elements alone and as an ordered combination.
The court concluded by stating “Regardless of whether the concept of ‘dynamically’ updating information containers and registers may have been novel and nonobvious at the time this patent was filed, the claims do nothing to ground this abstract idea in a specific way, other than to implement the idea on a computer.” It appears the district court found the claims to be invalid under Section 101 based at least in part on preemption grounds (i.e., the failure of the specification to specifically describe a particular embodiment of how the method was implemented).
Federal Circuit Analysis
In a brief opinion, the CAFC upheld the district court decision. The panel agreed with the district court on the abstract idea (citing Affinity Labs of Texas, Intellectual Ventures I, and Electric Power Group). Enfish was distinguished on the grounds that the main focus of the claims in that case was on an improvement to computer functionality itself, stating that the specific improvement in Enfish related to the way a computer database carried out the basic functions of data storage and retrieval “regardless of the subject matter or use to which that functionality might be put.”
Regarding the step 2B analysis, the CAFC seemed to echo the district court’s pre-emption fears, stating “Whether analyzed individually or as an ordered combination, the claims recite those conventional elements at too high a level of generality to constitute an inventive concept.” The panel distinguished Bascom Global based on a specific implementation of the internet filtering protocol. Interestingly, the claimed methods in Bascom also recited the method steps at a high level of generality as compared to prior cases, such as Enfish.
This case again points to the dangers in viewing the exception to Section 101 (in this case an abstract idea) and the technical issue to be solved at a high level divorced from the features claimed. When claims are analyzed in this way, it becomes very difficult to show the additional claim elements add significantly more to the judicial exception as required under the current analytical framework. Furthermore, this characterization allows the preemption doctrine to come into play as well.
In writing the specification, it is important to carefully describe the claimed methods and their relationship to the prior art in order to allow a fact-finder to properly place the claims in the correct context vis-à-vis the prior art and problem to be solved.