“The court agreed with Sonos that ‘the invention claimed in the ‘489 patent is directed to collecting information, analyzing it, and providing a notification’ and that ‘Electric Power clearly states that collecting information and analyzing it fall within the abstract idea category.’”
On November 2, the United States District Court for the Northern District of California, in Google LLC v. Sonos, Inc., issued an order granting Sonos’s motion to dismiss a cause of action for infringement of Google’s U.S. Patent No. 8,583,489 (the ‘489 patent). The court found that the ‘489 patent was patent ineligible as being directed to an abstract idea.
Google filed a patent infringement suit against Sonos alleging that Sonos infringed five of Google’s patents, including the ‘489 patent, which is directed to systems and methods for bookmarking media content for future availability. Sonos moved to dismiss the cause of action with respect to the ‘489 patent on the ground that it was directed to ineligible subject matter under 35 U.S.C. § 101 as an abstract idea. The ‘489 patent relates to a method of “determining if media content is available from different content sources” and “notifying a user when the availability of the media content changes.”
Patent Eligibility in the Computer Context
The court initially explained the two-step test for patent eligibility under Section 101 as set forth by the Supreme Court in Alice, noting that the test includes the steps of (1) determining whether the claims are directed to a patent-ineligible concept, and if so, (2) determining if the claims recite 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.” The court noted that patent eligibility is “often contested” in the computer context because the Supreme Court has held that “the mere recitation of a generic computer cannot transform a patent- ineligible abstract idea into a patent-eligible invention.”
The court considered several cases presented by each of the parties, including Sonos’ citation of Electric Power Group, LLC v. Alstom S.A. In that case, the Federal Circuit held that the patent in suit was directed to an abstract idea, reasoning that “collecting information…[is] within the realm of abstract ideas” and “[p]resenting the results of abstract processes of collecting and analyzing information, without more …, is abstract as an ancillary part of such collection and analysis.”
The court also considered cases presented by Google, including Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, wherein the Federal Circuit held that the patent in suit was directed to an abstract idea, but noted that an “inventive concept can arise from the ordered combination of [generic computer] components.”
Ultimately, the court agreed with Sonos that “the invention claimed in the ‘489 patent is directed to collecting information, analyzing it, and providing a notification.” The court also noted that “Electric Power clearly states that collecting information and analyzing it fall within the abstract idea category” and the step of providing a notification is no different from “presenting the results of an abstract process,” which is also an abstract idea under Electric Power.
In considering whether the ‘489 patent had an inventive concept, the court explained that an inventive concept “(1) cannot be furnished by the unpatentable abstract idea and (2) must provide something beyond well understood, routine, conventional activity.” In its opposition, Google asserted that the ‘489 is directed to two inventive concepts: (1) “targeted searching of aggregated content” and (2) “notification of when desired content becomes available.”
The court rejected both of Google’s asserted inventive concepts, stating that neither targeted searching nor notification supports an inventive concept under Electric Power. The court explained that the Federal Circuit in Electric Power noted that “merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes” and there was nothing to indicate that the targeted searching taught in the ‘489 patent used “something other than routine, unconventional activity.”
The court also rejected an argument by Google that the ‘489 patent includes an inventive concept because it provides an “architecture for achieving [a] desired result,” explaining that in order “for an architecture to provide an inventive concept beyond the unpatentable abstract idea, there must be sufficient specificity as to “how the desired result is achieved.”
Thus, the court granted Sonos’s motion to dismiss.