When claims are subject to the subject matter eligibility inquiry under 35 USC 101, details matter. In previous posts, the Patent 213 blog has stressed the need to provide details of the invention not only in the specification, but also in the claims. In Two-Way Media Ltd. v. Comcast Cable Communications, LLC (Nov. 1, 2017, Case Nos. 016-2531; -2532), the U.S. Court of Appeals for the Federal Circuit (CAFC) held a series of patents invalid under 35 USC 101 for failing to provide such details in the claims.

Two-Way Media asserted U.S. Patent Nos. 5,778,187, 5,983,005, 6,434,622 and 7,266,686 against Comcast. The asserted patents relate generally to systems for streaming audio/visual information over a communications network such as the internet. The patents explain that the prior art systems operated on a point-to-point, or unicast, basis, where a message is converted into a series of addressed packets which are routed from a source node to a destination. Multi-casting systems provide a way to transmit a single packet of information to multiple recipients on a network, a feature lacking in the unicast systems. Such technology had been previously used to provide audio/visual conferencing services and radio-like broadcasts. Two-Way Media argued that the asserted patents provided an improvement over the prior art by providing a multi-casting system with a scalable distribution architecture and a scalable control architecture that provides for superior management and administration of users who are to receive the information.

Unclaimed Features Doom Patent Claims Under Section 101 Eligibility Analysis -- Lessons from Two-Way Media

Claim 1 of the ‘187 was determined to be representative of the claims of the ‘187 and ‘005 patents (the claims of the remaining patents are not discussed, but were found by the CAFC to be broader than claim 1 below).

  1. A method for transmitting message packets over a communications network comprising the steps of:
  • converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol;
  • for each stream, routing such stream to one or more users;
  • controlling the routing of the stream of packets in response to selection signals received from the users; and
  • monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.

The district court found claim1 was directed to the abstract idea of sending information, directing the sent information, monitoring receipt of the sent information, and accumulating records about receipt of the sent information under step 1 of the Alice framework and concluded that claim 1 failed to recite a saving inventive concept, either viewing the claim elements individually or as an ordered combination, under step 2 of the Alice framework.

The CAFC agreed with the district court’s findings. The CAFC framed the step 1 inquiry in terms of specificity, stating “We look to whether the claims in the patent focus on a specific means or method, or are instead directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery” (citing McRO and Enfish).  In examining claim 1, the panel noted that the claim recited various functional aspects/results (such as converting, routing, controlling, monitoring and accumulating), but the claim did not adequately specify how the results were to be achieved. In other words, the claim did not recite any means/structure for achieving the results claimed.

We look to whether the claims in the patent focus on a specific means or method, or are instead directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery

In order to overcome the lack of specificity in claim 1, Two-Way Media argued for a construction of the term “controlling the routing of the stream of packets in response to selection signals received from the users” to mean “directing a portion of the routing path taken by the stream of packets from one of a designated group of intermediate computers to the user in response to one or more signals from the user selecting the stream.” Even adopting this claim construction (which the district court adopted), the CAFC found that the claims still failed to specify the relevant details of the scalable network architecture and how this scalable network architecture resulted in an improvement in the functioning of the system.

Under step 2, the panel determined that claim 1, either alone or as an ordered combination, failed to recite any inventive concept sufficient to rescue the claims from patent ineligibility. While recognizing the various advantages described in the specification for the scalable architecture (reducing of bottlenecks for example), the CAFC noted “While the specification may describe a purported innovative ‘scalable architecture,’ claim 1 of the ’187 patent does not.” In exemplifying the lack of specificity, the panel noted that with regard to the claim limitation of “data being routed in response to one or more signals from a user,” the claims did not specify the rules forming the communication protocol or the parameters for the user signals. As a result, these aspects, even though described to varying degrees in the specification, could not be considered in the step 2 inquiry.

Under the ordered combination analysis, the CAFC found that the claimed steps were performed in a conventional order, using conventional technology to achieve the desired result. The panel distinguished BASCOM, where the non-generic arrangement of known elements was sufficient to save the claims under the step 2 inquiry.

This case provides an excellent reminder regarding the need for claims, particularly claims having broad functional language, to provide claim detail sufficient to describe how the various aspects of the claim are achieved. In this case, the CAFC recognized the specification contained certain key details but did not consider these details in the eligibility analysis. It could be argued that the CAFC “read in” certain claim limitations in the McRO case to define the generically claimed rule sets, the claims in McRO specified certain concrete relationships required for the rule set. For example, the details of the first rule set were not provided in the claims, but the claim required the first set of rules to “define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence,” providing the basis for the operation of the rule set. This case also highlights the importance of recognizing when a claim is granted that may be overly broad and providing additional claims in the application with the required specificity.

The take home from Two-Way Media is that claims with broad functional language are likely to be construed as directed to a result/effect to be achieved unless the claims contain features that describe how the concept operates or is implemented.