Why a Hall of Fame patent for a content delivery network likely couldn’t survive Alice

By Gene Quinn
March 15, 2017

“Obviously, a test that would render claims to a Hall of Fame patent invalid is a broken test.”

Alice fallingIn May the National Inventors Hall of Fame will induct Tom Leighton and Daniel Lewin for contributions made relating to the invention of a content delivery network described in U.S. Patent No. 6,108,703. There can be little doubt that today the claims of the ‘703 patent would be considered to cover a patent ineligible abstract idea. In other words, had the United States Supreme Court decided Alice v. CLS Bank prior to the issuance of the ‘703 patent, Leighton and Lewin would never have received the ‘703 patent and they would not be eligible for induction into the National Inventors Hall of Fame.

The claims of the ‘703 patent are written to cover a distributed hosting framework (claims 1-13), methods (claims 14-18, 23-34), and a content delivery service (claims 19-22). According to the Supreme Court in Alice, systems claims are not different from method claims in terms of substance. The Supreme Court rationalized this disturbing and illogical determination by explaining that they have long warned against being fooled on patent eligibility based on the way claims are drafted. An interesting and rather absurd thing to say given that each claim is supposed to be interpreted individually and independently, and claims in a single patent can and do cover different categories of invention specifically enumerated in 35 U.S.C. 101. Nevertheless, in the infinite wisdom of the Supreme Court all that one needs to do is determine whether method claims are patent eligible and the system claims (i.e., machine claims) will follow.

Method claims in a patent such as the ‘703 patent are always the most susceptible to challenge as covering patent ineligible subject matter. There is no legal reason for this truism, but the way method claims are written often does seem rather approachable, even understandable, by those without any technical sophistication. This is particularly true when claims are improperly construed for purpose of a 101 determination, which happens in all cases. To properly construe claims you must review the entirety of the specification and the entirety of the prosecution history in addition to the claims. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); see also Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. ___ (2015). Of course, a 101 determination focuses only on the language of the claims and nothing more, sometimes focusing only on the preamble of the claim.

In any event, when the most fragile of the method claims are determined to be ineligible the decision maker can merely say “ditto” for all other claims within the same patent. In other words, method claims are the most fragile claims and decision makers identify the most fragile of the method claims as being representative. So if that most fragile method claim is not patent eligible then each and every claim in the patent will also be ineligible. Absurd I know, but that is how the cases on every level are decided.

The method claim of the ‘703 patent that is most easily challenged under Alice would likely be claim 15. Therefore, I will assume claim 15 to be representative of all the other claims in the patent simply because that is what decision makers do rather than determine claim by claim whether each claim is invalid, as the law requires. Claim 15 reads:

A method of serving a page and an associated page object, wherein the page is stored on a content provider server and copies of the page object are stored on a set of content servers distinct from the content provider server, comprising the steps of:

(a) modifying a URL for the page object to include a hostname prepended to a content provider-supplied domain name and path;

(b) serving the page from the content provider server with the modified URL;

(c) responsive to a browser query to resolve the hostname, identifying a given one of the set of content servers from which the object may be retrieved; and

(d) returning to the browser an IP address of the identified content server to enable the browser to attempt to retrieve the object from that content server.

The first question that must be addressed in analyzing representative claim 15 (commonly referred to as Step 1) is whether the patent claim covers an invention from one of the four enumerated categories of invention defined in 35 U.S.C. §101 (i.e., is the invention a process, machine, article of manufacture, or composition of matter). If the answer to this question is no then the patent claim is patent ineligible. If the answer is yes the decision maker must move on to the next inquiry. Claim 15, which by its express terms is written to cover a method, does cover an enumerated invention category (i.e., a process) and, therefore, is patent eligible insofar as the statute is concerned.

As ridiculous as it sounds, the statutory question is not the only question that must be asked and answered. If the statute promulgated by Congress is satisfied the decision maker must plow forward to ask whether the extra-statutory requirements of the Supreme Court are also satisfied. Indeed, there is no support anywhere in the statute for the existence of the Supreme Court’s extra-statutory requirements, but decision makers on every level have been forced by the Supreme Court to apply their vision over and above the statutory requirement enacted by Congress.

The second question (commonly referred to as Step 2A) is where the extra-statutory Alice/Mayo framework truly begins. Step 2A requires the decision maker to ask whether the patent claim seeks to cover one of the three specifically identified Supreme Court exceptions to patent eligibility, which are known as judicial exceptions. At the moment the Supreme Court has only identified three judicial exceptions that go over and above the statutory requirements. These three judicial exceptions are: laws of nature, physical phenomena, and abstract ideas. If the claim does NOT implicate one of these three judicial exceptions then the claim is patent eligible.

In the case of representative claim 15 of the ‘703 patent, the claim clearly covers an abstract idea. All claim 15 covers is redirection of a URL to a server other than the server that originally hosted the content. Telling a browser to retrieve information from “here” and not “there” has to be about as abstract as one can possibly imagine. Such an invention is really no different than what humans have been doing for eons. For example, don’t retrieve the information from the Library of Congress in Washington, DC, just go to your local library and access the information there because it will be the same information and it will be much quicker because your local library is so much closer.

Obviously, the above articulation of how and why a content delivery network is abstract is absurd. I don’t believe it and you shouldn’t either. It is, however, exactly how a decision maker, whether a patent examiner, an Administrative Patent Judge on the PTAB, or a federal judge would define the underlying abstract idea at play in the ‘703 patent. And frankly, with how claim 15 is written there is very little substance present in the claim that could be successfully used even by the most skilled patent attorney to argue to the contrary.

In the case where the patent claim seeks to cover a judicial exception to patent eligibility, the final question (commonly referred to as Step 2B) asks whether the inventive concept covered in the claimed invention adds “significantly more” than the judicial exception, or whether the claimed invention did not add “significantly more” and, therefore, was seeking to merely cover the judicial exception. Step 2B is also sometimes characterized as the search for the inventive concept.

In this case, claim 15 of the ‘703 patent does not add significantly more than the judicial exception. There is nothing in the subject matter of the claim that transforms the abstract idea of delivering content from a secondary server into an inventive concept. At best it provides a practical application for the concept of delivering content from a secondary server, but the recitation of a practical application for an abstract idea is insufficient to transform an abstract idea into an inventive concept.

Truthfully, I don’t know what any of the previous paragraph means. It is largely taken from the PTAB’s decision that an MRI machine is an abstract idea. I just swapped out “classification” and “image classification” (which related to the MRI machine) and instead wrote “delivering content from a secondary server,” which relates to claim 15 of the ‘703 patent. So if you are frustrated that the previous paragraph uses a lot of words that convey little or no meaning, join the club! Decisions on Step 2B about whether there is an inventive concept that adds significantly more are purely subjective and typically delivered with obligatory double speak, which at best employs circular logic.

Despite the fact that I don’t understand and can’t explain why claim 15 of the ‘703 patent doesn’t contribute significantly more in any fair-minded objective way, would simply not be relevant under the Alice/Mayo framework. When making patent eligibility determinations there is no presumption of validity given to the patent despite 35 U.S.C. 282 saying patents are presumed valid. That means the burden is realistically on the patent owner to demonstrate there is something in the claim that adds significantly more (whatever that undefined term means) and there is really nothing concrete within claim 15 that even the most skilled patent attorney could point to and build an argument around. Therefore, claim 15 of the ‘703 patent would clearly be patent ineligible and, therefore, all the other claims would likewise be patent ineligible.

Obviously, a test that would render claims to a Hall of Fame patent invalid is a broken test.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 19 Comments comments. Join the discussion.

  1. CW5 March 15, 2017 12:43 pm

    Great post, Gene. I wonder how many other famous patents would fail the hopelessly unworkable Alice/Mayo test.

    I also wonder whether the Supremes had any idea how drastically they were changing existing patent law with their judicial legislation. Sadly, I doubt they did.

  2. step back March 15, 2017 1:43 pm

    Gene,

    I think you still don’t fully get it that the Brown Shirts (BS’ers) have already taken over the judicial safety nets. The Patent Office is metaphorically in flames. Look at today’s CAFC decisions!

    Data is data? (CLARILOGIC v. FORMFREE)

    Consider these two hypotheticals re “data is data”:

    1) Sir, you MRI “data” has just come back from the MRI machine and unfortunately you have a growth in your brain. The MRI “data” indicates that it is still operable if we hurry and operate this week. Next week may be too late. Please add your signature “data” to this consent form so that we may proceed immediately.

    2) Sir, the “data” about your 4th life avatar indicates that we must deduct 5 game points from its account due to a game play violation. If you wish to dispute, please submit your rebuttal data within the next 90 days.

    Data is data?
    Everything is nothing?
    How did we get to this place?
    Do we just sit back like silent lambs and take it?

  3. Night Writer March 15, 2017 6:56 pm

    @2 step back: I agree. And, the mere logic rules that were applied to the data.

    So, a machine that performs Reyna’s job is abstract. And, why do the Fed. Cir. judges not just issue random letters for their opinions? Data is data. And, why go to college? Mere logic rules applied to data.

    Insanity. I am now strongly in favor of wiping the Fed. Cir. Just disband it and reform it. Note that Reyna admitted that he knew nothing of patent law when he was in his confirmation hearings and was very likely selected by Google.

  4. I'm worth a million comprises March 16, 2017 4:35 am

    On the one hand I appreciate your caricature of Joe Examiner’s 101 analysis of claim 15. OTOH, it could be allowed under the Enfish memo (particularly if it were drafted according to today’s conventions), and I have seen other patents for creative packet manipulation that have been allowed recently.

    So yes, there should not be any 101 issue here at all, but you are overstating things, by asserting that it would never be allowed today.

  5. I'm worth a million comprises March 16, 2017 4:40 am

    It’s fine to complain that Formfree is a misuse of the “abstract idea” etc., but the reality is that Formfree simply had a bad patent including nothing innovative.

  6. Mark Nowotarski March 16, 2017 8:34 am

    Gene,

    I completely agree with your analysis, but the USPTO sees it differently. If this patent were filed today, it would likely be assigned to art unit 2447 (e.g. US class 709/226 Network resource allocation). The allowances in art unit 2447 have actually gone up since Alice. There were 280 in 2013 before Alice and 294 in 2016 a year after Alice. So in the USPTO’s eyes, this subject matter is just fine.

  7. Eric Berend March 16, 2017 9:14 am

    @ 2., ‘step back’; and 3, ‘Night Writer’:

    I must also concur. As to the second point, ‘Night’: I have not yet been able to find another Presidential Administration in the history of the United States, with a higher proportion of appointees overall at the behest of a single influence; as were former Google employees or lobbyists (agents), in the administration of one Barrack Obama.

  8. Eric Berend March 16, 2017 9:17 am

    Aw, did I misspell the former President’s name with two r’s. Hmmm… I suppose a minor correction, is in order: above, that would be “barack Obama”, instead.

    Not that I care very much, at this point. To me, and numerous other U.S. inventors, he became Google’s anti-patent Sycophant-in-Chief.

  9. angry dude March 16, 2017 10:12 am

    barack hussein obama – a lawyer, community activist and not much else propelled by special interests to be the prez
    regrettably I voted for that pos once cause mccain looked senile and scary but he would’n have done a tenth of the damage done by obama

  10. angry dude March 16, 2017 10:18 am

    CW5 @1

    “I wonder how many other famous patents would fail the hopelessly unworkable Alice/Mayo test”

    Let’s see…

    US4405829 – a very famous RSA patent enabling all e-commerce and zillions of other things *on the internet* today

    https://www.google.com/patents/US4405829

    BUT… it’s an *abstract math* (with math formulas in the claims)

  11. Gene Quinn March 16, 2017 10:53 am

    I’m worth a million comprises-

    You say that claim 15 could be allowable if it were drafted differently. Perhaps that is correct, but all that does is prove my point. If we knew what the standards were that would be applied we could write the claims and the specification to describe the inventions to satisfy those standards. The problem is the standards shift and then get applied retroactively. So saying that this could be patented only if you did everything differently is both insightful and rather silly all at the same time. It is insightful because it is, of course true. It is silly because the fact that it could have been done differently is completely irrelevant in any 101 analysis (or 102, 103 or 112 analysis as well).

    The fact is the claim 15 would have absolutely no chance under the standards of today and that would irrevocably taint every other claim in the patent. Whether I like that or think it is egregiously stupid (which of course it is) that is the way examiners and judges handle 101.

    As far as me overstating things, you can believe that if it makes you feel better. I have overstated nothing though.

    -Gene

  12. angry dude March 16, 2017 11:19 am

    Gene Quinn @11

    “If we knew what the standards were that would be applied we could write the claims and the specification to describe the inventions to satisfy those standards”

    Or even better – we could avoid wasted time/resources and aggravation altogether by staying away from US patent system

  13. step back March 16, 2017 12:13 pm

    @11 Gene,

    Other labels for retroactive law creation include:
    Ex post facto law making (unconstitutional), and
    Unilateral contract revision (breaking the quid pro quo bargain that was originally struck).

  14. jbavis March 16, 2017 12:48 pm

    “the enemy of my enemy is my friend”.

    Seems to me that makes Uber a very close friend of patents. Google is going to war against Uber on driverless car technology: https://www.forbes.com/sites/alanohnsman/2017/03/01/waymos-trade-secret-suit-against-uber-marks-start-of-automated-car-patent-wars

    Driverless car technology could be as big as smartphones.

    And look at Google’s weapon of choice:

    “also makes clear that the company intends to aggressively protect that patent trove and big head start.”

    It might be very interesting for the ipwatchdog community to look at and discuss and bounce ideas around how Alice could be used against Google’s “patent trove”.

    What’s good for the goose is good for the Google?

  15. Gene Quinn March 16, 2017 12:55 pm

    Step @13-

    Sigh… Yes. When you say it like that even a Justice should be able to understand how fundamentally unfair what they have done is, of course that would require self reflection, which also requires caring enough in the first place to reflect in the first place.

  16. jbavis March 16, 2017 12:57 pm

    from: http://nymag.com/selectall/2017/03/googles-lawsuit-against-uber-could-destroy-uber.html

    “Droz outlines some of the innovations Waymo developed along the way — many of which are codified into patents, such as Waymo’s key insight into building a single lens for its laser range-finding system”

    hello Alice is that you?

  17. jbavis March 16, 2017 1:09 pm

    https://www.bloomberg.com/news/features/2017-03-16/fury-road-did-uber-steal-the-driverless-future-from-google

    “During new-hire orientation, engineers at Google are frequently told that the company will never sue a former employee for patent infringement.”

    Oh really?

    “The implication is twofold: first, that Google doesn’t stoop to fighting over patents, though it may employ them to protect itself from people who aren’t in the business of changing the world. (“These patent wars are death,” Executive Chairman Eric Schmidt said at an event in 2012, calling patent litigation “bad for innovation.”) And, as an extension of that, if Google sues you over a patent issue, you must have really pissed them off.”

    P-ed off enough to recognize the destruction PTAB causes to valid patents? Probably not BECAUSE THEY HAVENT BEEN ON THE RECEIVING END OF PTAB.

    “Some former colleagues seem to think that even if Levandowski did what Google alleges, he doesn’t deserve to be punished. “Whatever Google may say about him stealing lidar trade secrets, he was the lidar team at Google,” ”

    Ironic that Google played a large role in coddling and nurturing this sentiment in software community. Good for the goose is good for Google.

  18. Eric Berend March 16, 2017 8:06 pm

    @ 11., Gene:

    And this is some of the very harm, that I have asserted my objections to, in this and a few other Internet-based forums. I am glad that, while in theory and in principle, you advise inventors to seek proper patent protection and engage in the process, such as it may be; you also do acknowledge that essential components of its structure, as now practiced, have become unworkable, antagonistic to innovation and untenable.

    From the standpoint of a more legally sophisticated inventor, I would daresay most of us are now throw into quandary as to said engagement; particularly if a given inventor has strong agreements of belief with the original Constitutional purposes embodied in Article I.

    In a criminal law sense, it remains to be seen, if there will ever be enough evidence of the mens rea of responsible persons at Google, Inc., etc., to demonstrate: that this ‘quandary effect’ of severe doubt afflicting inventors, to our irreparable harm for their unjust enrichment; as one of the motivations for criminally liable influence peddling; has been a premeditated goal of this patent destruction conspiracy or racket, from the very beginning.

    Does this overall situation, not actually fit the description and requirements for so-called “civil RICO”? I allege that, in fact, it does. Not that the U.S. Attorney in town, here in S.D. N.Y., would actually act on this information: he was too busy riding shotgun for Facebook (yet another gold-plated SVP) by running down one particular early Facebook contractor with trumped-up criminal charges in what is, at heart, a civil dispute (yes – one Praheet Bharara, himself).

    Can it be admitted, at the least, that there is breakdown in the separation-of-powers; with a special favoritism shown for particular “Big Tech” and”Big Banking” interests, for the purpose of deliberately inducing irreparable harm against U.S. inventors and patentees? Is that too much to ask? Is the mendacious and destructive nature of the actions, attitudes and intent of the foes of U.S. patent protections; as promulgated in the past fifteen years at all levels of U.S. government; not clear enough, as being quite deliberately planned in the form of a very large scale racket and real world conspiracy?

    Can we at least be realistic and honest about this issue, as it now stands? Surely, without recognition of the problem domain and its challenges, there is no hope of redressing and correcting these devastating wrongs.

  19. Dr. Yesno March 28, 2017 11:13 am

    Brilliant !! Judges creating law by the extra-statutory “judicial exception” of abstract idea, which is then employed to nullify or effectively repeal 35 USC 282. How awesome these guys are, making effective changes to the Law without Notice to the Public. “Abstract Idea” belongs in the Sec. 112 analysis, not Sec. 101 analysis. Would limiting the step 1 analysis to only natural phenomenon and laws of nature and re-delegating abstractness to 112 solve the problem ??

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