Saturday, August 14, 2021

PersonalWeb loses on 101: Stringing together the claimed steps by “[a]dding one abstract idea . . . to another,”

The outcome was a loss for PersonalWeb under 35 USC 101:

PersonalWeb Technologies appeals a decision by the United States District Court for the Northern District of California granting judgment on the pleadings for appellees Google LLC, YouTube, LLC, Facebook Inc., EMC Corporation, and VMware, Inc. That decision held various claims of U.S. Patent Nos. 7,802,310 (“the ’310 patent”), 6,415,280 (“the ’280 patent”), and 7,949,662 (“the ’662 patent”) ineligible for patenting, and therefore invalid, under 35 U.S.C. § 101.1 PersonalWeb Techs. LLC v. Google LLC, No. 5:13-CV-01317, 2020 WL 520618, at *14 (N.D. Cal. Jan. 31, 2020). We affirm.

Part of the argument

PersonalWeb contends that the claims are directed to “a substantially unique, algorithm-derived, content-based identifier for all data items in a networked computer, which allows a computer within a network containing diverse computing and storage systems to locate and distribute data without knowing either the file system of any device within the network or the conventional name of any data item.” Appellant’s Br. 23. The district court, on the other hand, concluded that the patents are directed to a three-step process: “(1) using a content-based identifier generated from a ‘hash or message digest function,’ (2) comparing that content-based identifier against something else, [that is,] another content-based identifier or a request for data; and (3) providing access to, denying access to, or deleting data.” PersonalWeb, 2020 WL 520618, at *10. We adopt the district court’s view, which closely tracks the claim language. See ChargePoint, 920 F.3d at 769 (“[T]he § 101 inquiry must focus on the language of the Asserted Claims themselves . . . .” (quoting Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016)); Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement . . . .” (emphasis added)). The district court’s description, for example, mirrors the progression of ’310 patent claim 24 (reproduced above), on which PersonalWeb relies, Appellant’s Br. 24. Although PersonalWeb criticizes the district court’s “summary of the asserted claims into a three-step process,” Appellant’s Br. 31 (internal quotation marks omitted), this formulation is not meaningfully distinguishable from what PersonalWeb said in opposing the § 101 motion:
The asserted claims all recite (1) dividing the data into sequences of bits, (2) calculating content-based identifiers using the data in the data items, . . .
Because we must “focus here on whether the claims of the asserted patents fall within the excluded category of abstract ideas,” we agree with the district court. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. Cir. 2014) (emphasis added). We therefore conclude that the claims are directed to the use of an algorithm-generated contentbased identifier to perform the claimed data-management functions, which across the three patents include controlling access to data items (the ’310 patent), retrieving and delivering copies of data items (the ’280 patent), and marking copies of data items for deletion (the ’662 patent).

(...) True, the step-one inquiry “looks to the claim[s’] ‘character as a whole’ rather than evaluating each claim limitation in a vacuum.” Ericsson, 955 F.3d at 1326 (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)). But these claims “are clearly focused on the combination of those abstract-idea processes.” Elec. Power, 830 F.3d at 1354. Stringing together the claimed steps by “[a]dding one abstract idea . . . to another,” RecogniCorp, 855 F.3d at 1327, amounts merely to the abstract idea of using a content-based identifier to perform an abstract data-management function—whether controlling access to data, retrieving data, or marking data for deletion. See, e.g., Secured Mail, 873 F.3d at 911 (“[E]ach step of the process uses an identifier . . . to communicate information about a mail object.”).

Ultimately, “the focus of the claims is not on . . . an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). In other words, the claims focus on “mere automation of manual processes using generic computers.” Id. That fails step one.
Onward to step two. Here we undertake “a search for an inventive concept—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Alice, 573 U.S. at 217–18 (cleaned up).

The matter of judgment on the pleadings in a 101 case:

Last, PersonalWeb argues also that “fact questions created by the specification’s disclosure” made judgment on the pleadings “improper.” Appellant’s Br. 51 (quoting Berkheimer, 881 F.3d at 1370). While we agree that “the most relevant and dispositive evidence before the district court was the set of patents themselves,” Appellant’s Br. 50, we disagree that this could have precluded judgment on the pleadings here. “What is needed is an inventive concept in the non-abstract application realm.” SAP, 898 F.3d at 1168. None of PersonalWeb’s “improvements in the specification” fit that bill. Appellant’s Br. 51. Instead, they “lie[] entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” SAP, 898 F.3d at 1163. Judgment on the pleadings, therefore, was appropriate.


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