Patent 101 Continued
Section 101 challenges continue to be front and center at the district court level, including three recent decisions in the United States District Courts for the Northern District of California and Eastern District of Virginia which reflect holdings falling on opposite sides of 101 patentability. In France Telecom S.A. v. Marvell Semiconductor Inc., the court denied defendant’s summary judgment motion because it failed to meet the “high level of proof” needed to succeed on an eligibility challenge under section 101. There, the patent involved correcting errors in telecommunication and other signals (caused by noise or interference which distorts the data) known as turbo coding. After summarizing relevant jurisprudence, the court identified the abstract ideas relevant to the subject matter of the patent claims at issue as “error-correction coding” or “decoding digital data elements.” The court then analyzed whether the claims contained “additional substantive limitations that narrow, confine, or otherwise tie [them] down.” Specifically, the court found that they provide “unique and detailed [error-detection coding or decoding] methods . . . or inventive concepts that exceed the prior art, namely, coding in parallel and a novel method of iterative coding.” Thus, the claimed inventions “provide the necessary substantive claim limitations beyond the mere recitation” of abstract ideas. The court also gave the claims a passing grade in the machine-or-transformation test: “[c]laim 1 takes digital data elements and turns them into a distinct series of coded data elements, which Claim 10 in turn decodes.” The court further found relevant (similar to the court in TQP Development we previously discussed) that the purpose of the patent was “to disclose a method for more accurate and efficient data transmission.”
Conversely, the courts in Intellectual Ventures I LLC v. Capital One Financial Corp. and GameTek LLC v. Zynga, Inc., held that the defendants in those cases as a matter of law proved by clear and convincing evidence that the patents at issue were not directed to patentable subject matter under section 101. The court in Intellectual Ventures summarized the claimed invention as nothing more than “the entry of data into a computer database, the breakdown and organization of that entered data according to some criteria, . . . and the transmission of information derived from that entered data to a computer user, all through the use of conventional computer components . . . operating in a conventional manner.” According to the court, the claimed invention is not “inventive technology or other inventive concept that authorizes the protections of a patent” unlike an “improvement in the workings of the computer or the transmissibility of data or some other transformation of data into something qualitatively beyond the informational content of the data entered . . . .”
In GameTek LLC v. Zynga, Inc., the court invalidated the patent-in-suit under section 101 because it was directed to “an unpatentable abstract idea.” The court summarized the patent as, “a method by which a game operator can offer additional items to players for purchase mid-game without interrupting play.” Despite the claim having allegedly twelve steps, the court condensed these to “nothing more than a teased-out version of the basic steps of any commercial transaction: a seller offers an item for sale to an interested and able buyer, the buyer accepts that offer, and the seller then provides the item in exchange for valuable consideration.” The court further found that the patent “provides no meaningful limitations on the underlying abstract idea.” As such, the motion to dismiss was granted. Interestingly, this was a rare instance where a court dismissed a case at the pleadings stage for lack of patentable subject matter.
Gibbons will continue to monitor Section 101 cases and the Supreme Court’s anticipated CLS Bank Int’l decision.