The Federal Circuit Reiterates That Computerizing Activities Traditionally Done By Hand Usually Constitute Abstract Ideas Without An Inventive Concept, And Are Generally Not Patentable Subject Matter
On October 17, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the ruling of the Western District of Washington (W.D. Wash.) that patents directed to abstract ideas absent a transformative inventive concept are not deemed to be patentable subject matter under 35 U.S.C. § 101. IBM v. Zillow Grp., Inc., No. 2021-2350, -- F.4th -- (Fed. Cir. Oct. 17, 2022).
In 2019, plaintiff sued defendants for infringement of several patents regarding graphical display technology. Defendants moved for judgment on the pleadings, arguing that two of plaintiff’s asserted patents claimed ineligible subject matter under 35 U.S.C. § 101 because they fail to cover a new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof. The first patent, U.S. Patent No. 9,158,789 (the ’789 Patent), is directed to methods in which a user draws a shape on a map to select an area of the map, and the claimed system filters and displays data limited to the area of the map drawn by the user. The second patent, U.S. Patent No. 7,187,389 (the ’389 Patent), is directed to methods of displaying objects in visually distinct layers. The district court. granted the motion with respect to the claims of both patents, concluding that they consisted of abstract ideas and lacked any transformative inventive concepts, and thus failed to recite patentable subject matter.
Regarding the ’789 Patent, the district court deemed claim 8 to be representative. The district court held that claim 8 illustrates the abstract idea of responding to a user’s selection of a map by simultaneously updating the map along with a list of items on the map. The district court reasoned that claim 8’s method could be executed by hand using, inter alia, a printed map, paper, and scissors. Furthermore, it held that the ’789 Patent’s inventive concepts were simply restatements of the abstract solutions the invention aimed to achieve, since they fail to illustrate how certain inputs are received or displays are synchronized. The district court also emphasized that the patent requires nothing but “generic computer technology.”
Regarding the ’389 Patent, the district court held that the representative claims merely illustrate abstract concepts of classifying and displaying information, noting that identifiers such as shapes, colors, or patterns have been “long used” to distinguish between visible items in a display. As an example, the district court alluded to lines on maps that were drawn by hand before the use of computers.
The CAFC reviewed the determinations of the district court by applying a two-step standard for evaluating patent eligibility, as established by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Step one of Alice involves a determination of whether a patent claim is directed to an unpatentable law of nature, natural phenomena, or abstract idea. Step two is an evaluation of whether the claim includes an inventive concept sufficient to turn the nature of the claim into a patent-eligible application. Applying the standard, the CAFC agreed with the determinations of the district court.
Regarding the ’789 Patent, the CAFC found that the claims do not list any inventive technology for improving computers as tools, amounting to nothing more than abstract ideas involving the use of computers. Moreover, the CAFC agreed with the district court that the ’789 Patent is result-oriented and lacks an explanation as to how to achieve the results.
Regarding the ’389 Patent, the CAFC found that, while the representative claims may increase the speed at which an organizational process is completed by using a computer, they fail to illustrate any improvements in computing technology. Furthermore, the CAFC found the language of the claims to be merely functional, as the claims describe operations without explaining how to achieve the results.
Given that no inventive concept in either of plaintiff’s patents transforms the claimed abstract idea of organizing and displaying visual information into a patentable application of that idea, the CAFC affirmed the conclusion reached by the district court that both the ‘789 and ‘389 Patents are invalid under 35 U.S.C. § 101.
Judge Stoll dissented-in-part, finding that claims 9 and 13 of the ‘389 Patent have a plausible basis for eligibility when accepted as true, in conjunction with all reasonable inferences. Judge Stoll found that both claims illustrate a specific approach to resolving a technical issue that existed among user interfaces at the time of the invention. Specifically, she noted that—unlike paper maps—displays on a computer are limited in size. In this regard, Judge Stoll found persuasive a declaration given by plaintiff’s technical expert, who explained that prior art methods for displaying large amounts of condensed data on a computer screen caused the displayed data to be “incomprehensible.”