Friday, March 06, 2020

Customedia loses appeal to CAFC under 35 USC 101

The outcome of the Customedia case:

Customedia Technologies, LLC appeals the Patent
Trial and Appeal Board’s final written decisions holding
claims 1–6, 8, 17, and 23 of U.S. Patent No. 8,719,090 and
claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 of U.S.
Patent No. 9,053,494 ineligible under 35 U.S.C. § 101 and
finding claims 1 and 5 of the ’090 patent unpatentable under 35 U.S.C. § 102.
Because the claims are ineligible under § 101, we affirm the Board’s determinations.
We do not reach the Board’s § 102 findings.

Of analysis under 35 USC 101:

Section 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof,” may obtain a patent. 35 U.S.C. § 101. The Supreme Court has held that “[l]aws of nature, natural phenomena, and abstract ideas are not patent eligible.” Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Assoc. for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)). We follow the Supreme
Court’s two-step framework for determining patent-eligibility under § 101. Id. at 217. First, we determine whether
the claims are directed to a “patent-ineligible concept,”
such as an abstract idea. Id. If so, we “consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78–79 (2012)).

Of Alice step one:

Here, for
instance, Customedia argues that its claims are eligible because they “provide for improvements to the operation and
functioning of computer systems.” Appellant’s Br. 71, Nos.
18-2239, -2309. We do not agree. The claims at issue here
are directed to the abstract idea of using a computer to deliver targeted advertising to a user, not to an improvement
in the functioning of a computer.

To be a patent-eligible improvement to computer functionality, we have required the claims to be directed to an
improvement in the functionality of the computer or network platform itself. In Ancora Techs. Inc. v. HTC America, Inc., for example, we held that claims directed to
storing a verification structure in computer memory were
directed to a non-abstract improvement in computer functionality because they improved computer security. 908
F.3d 1343, 1347–49 (Fed. Cir. 2018). We determined the
claims addressed the “vulnerability of license-authorization software to hacking” and were thus “directed to a solution to a computer-functionality problem.” Id. at 1349.
Likewise, in Finjan, Inc. v. Blue Coat System, Inc., we held
that claims to a “behavior-based virus scan” provided
greater computer security and were thus directed to a patent-eligible improvement in computer functionality. 879
F.3d 1299, 1304–06 (Fed. Cir. 2018).


We have held that it is not enough, however, to merely
improve a fundamental practice or abstract process by invoking a computer merely as a tool. For example, in Affinity Labs. of Texas, LLC v. DIRECTV, LLC, we held that
claims to a method of providing out-of-region access to regional broadcasts were directed to an abstract idea. 838
F.3d 1253, 1258 (Fed. Cir. 2016).


But to be directed
to a patent-eligible improvement to computer functionality,
the claims must be directed to an improvement to the functionality of the computer or network platform itself. See,
e.g., id. 1336–39; DDR Holdings, LLC v., L.P.,
773 F.3d 1245, 1257–59 (Fed. Cir. 2014). Thus, this inquiry
“often turns on whether the claims focus 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.’” Finjan,
879 F.3d at 1303 (quoting Enfish, 822 F.3d at 1335–36).

Of Alice Step Two:

Customedia argues that the claims are eligible under
Alice step two because the use of a programmable receiver
to dedicate a section of storage for storing only “specifically
identified advertising data” was innovative over prior art
approaches. However, the invocation of “already-available
computers that are not themselves plausibly asserted to be
an advance . . . amounts to a recitation of what is well-understood, routine, and conventional.” SAP, 898 F.3d at
1170. The ’090 and ’494 patent claims’ invocation of a conventional receiver is insufficient to supply the required inventive concept. Thus, we conclude the Board did not err
in holding the claims of the ’090 and ’494 patents ineligible
under § 101.


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