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