District Court Finds Google Patent Ineligible Under Alice

By IPWatchdog
November 7, 2020

“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.

Inventive Concept

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.

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Discuss this

There are currently 15 Comments comments. Join the discussion.

  1. Pro Say November 7, 2020 4:56 pm

    Google done been Aliced?

    Hilarious.

    How’s it feel being thrown into the eligibility swamp you helped create and keep filled?

  2. TR November 8, 2020 11:40 pm

    “Here, Google has not sufficiently explained how the ‘489 patent is an improvement in computer functionality. Again, as noted above, Google is ultimately asserting that the ‘489 patent is an improvement over human limitations.”

    “has not sufficiently explained” – first DDR becomes a “draftsman’s art” then will SCOTUS disapprove of its mechanical application like M-o-T test? Looking at foreign approaches, DDR appears on the cusp of rebuke. But can an “Internet-centric” claim really recite an abstract idea?

    It seems like there could be a lot to unpack here.

  3. Anon November 9, 2020 7:18 am

    The notion of a claim being “centric” is being made into a Gordian Knot of how ANY judge at a district court level can use the mess created by the Supreme Court and the recognized conflicting morass of current eligibility jurisprudence to completely disregard the decisions of ANY OTHER panel and reach a Desired Ends (with total disregard to ANY Rule of Law Means).

  4. TFCFM November 9, 2020 10:31 am

    How unsurprising. “Anything and everything that achieves my desired function” doesn’t work for Google, either.

    That seems only fair.

  5. ipguy November 9, 2020 3:32 pm

    Between PTAB fights and district court litigation, patent litigators seem to have only profited from the subject matter eligibility madness. Google is willing to pay litigators tens of thousands of dollars to fight just the 101 issues during litigation. On the other hand, from what I’ve heard, Google is nickel and diming patent prosecutors trying to overcome 101 issues during prosecution.

  6. Jam November 9, 2020 3:34 pm

    What would truly be interesting, is if Google appealed eligibility up to the Supreme Court and the Supreme Court overturned Alice based on this case. However, in order for that to happen, the value of the Sonos lawsuit would have to be greater than the value of using Alice against all software patents that could be potentially be asserted against Google, which may not be the case.

  7. TR November 10, 2020 12:56 am

    @TFCFM fair would be applying the patent laws as they are written in the statute. If the claim is too broad then there should be plenty of prior art out there. There’s no pen-and-paper analog to this claim. So how’s it abstract?

  8. Jam November 10, 2020 1:27 pm

    Upon closer look, Judge Chen of USDC N.D.Calif. at Alice step 1 (i.e., Step 2A prongs 1 and 2) indicates at pages 17-18 that Google “has not sufficiently explained how the ‘489 patent is an improvement in computer functionality.” This is arguably incorrect because the notification required by the claims is a notification that the prior art does not provide and is the very improvement that Judge Chen says he cannot find. In other words, arguably, prior art computers do not provide this notification, thus, providing this notification is the improvement to computer functionality. Furthermore, arguably, applying the logic of at Alice Step 1 from Judge Chen in this case would overturn Diamond v. Diehr. E.g., pulling out the Arrhenius equation from the claim (in the same manner that the notification was not considered at Step 1) provides that there is no improvement to the steps of closing a press, waiting, then opening the press for rubber curing. If use of the Arrhenius equation outside the scope of the prior art is the improvement in Diehr, then use of the notification outside the scope of the prior art is the improvement in Google.

    At Step 2 (i.e., Step 2B) Judge Chen (at pages 18-20) argues patent ineligibility because the steps are well-understood routine and conventional and because the patent does not specify how the steps are performed. The claimed steps to generate and provide the notification are not well-understood, routine, and conventional as a whole. Evidence of this fact is arguably found in the prior art of record cited against the case, which does not show the claimed method as a whole is well-understood, routine, and conventional activity. Furthermore, arguably, the reasoning employed by Judge Chen at Step 2 again violates the holding in Diehr in that Diehr does not describe how each of its steps is performed (e.g., Diehr does not describe how the “repetitively calculating …” step is performed). Thus, one can argue that the holding at both Steps 1 and 2 are incorrect on their face and that the reasoning used in both would overturn established case law from the Supreme Court.

  9. TFCFM November 11, 2020 11:19 am

    TR@#7: “If the claim is too broad then there should be plenty of prior art out there. There’s no pen-and-paper analog to this claim. So how’s it abstract?

    Abstractness is not, at least for this type of anything-that-achieves-my-desired-function claim, a prior-art-driven issue. Similarly, the potential existence of a “pen-and-paper analog” (whatever that might mean to you, to me, or to a litigant) is simply irrelevant.

    Claim 15 recites, in relevant parts:

    15. … media having instructions therein … executable to execute a method comprising:
    – receiving
    [information] (i.e., “a selection of media
    content and content delivery preferences
    “),
    – requesting
    [information] (i.e., “content availability data“),
    – receiving
    [the requested information], and
    -using
    [the requested information] to generate a notification for an electronic device, wherein the notification indicates [a status].

    The claim is abstract because it is directed and encompasses any and all “instructions” — whether disclosed, invented, or even remotely imagined by the patentee — that achieve these functions. In that respect, the claim is intellectually (and eligibility-wise) no different than Samuel Morse’s claim in the Telegraph Case (“the use of the motive power of the electric or galvanic current … however developed for marking or printing intelligible characters, signs, or letters, at any distances“).

    That the patentee here may have ever-so-slightly limited the types of not-yet-invented instructions to which he hoped to apply the claims does not alter the outcome. The claim is abstract because it encompasses subject matter neither disclosed nor invented by the patentee, on the sole basis that that subject matter performs the same function as what the inventor actually invented and disclosed.

    That is the type of “abstractness” which afflicts this claim, and this type of abstractness is unaffected by whether the not-yet-invented/disclosed subject matter appears in the prior art or can be performed using a pen and a piece of paper.

  10. TFCFM November 11, 2020 11:21 am

    (Should have included the cite for “the Telegraph Case,” in case anyone is not familiar. It is 56 U.S. (15 How.) 62 (1853).)

  11. TR November 11, 2020 11:47 am

    TFCFM@9-10 I agree with your point that the “pen-and-paper” argument is not the end of the discussion. A claim that you describe would likely be found unpatentable, though for section 112 disclosure and enablement issues rather than as an abstract idea/natural law.

    But you are also savagely over-generalizing the claims at issue. You cannot just remove limitations from the claim without explaining why they don’t matter. I would also argue that you are underplaying the technical problem argument DDR if you are arguing invalidity under the abstract idea principle. There is no “any means to perform a function” doctrine under the abstract idea principle. The reasoning you invoke is for claims that recite a natural law, which these claims plainly do not.

  12. Anon November 11, 2020 2:56 pm

    I have to wonder if TFCFM has ever written a claim in his life.

    If so, was it anything other than perhaps some chem or bio-chem picture claim.

    He treats his favorite ‘go to’ of “what you actually invented” in flat out contradiction to how most all patent attorneys actually develop claim scope beyond picture claims.

  13. TFCFM November 12, 2020 11:56 am

    TR@#11: “ There is no “any means to perform a function” doctrine under the abstract idea principle. The reasoning you invoke is for claims that recite a natural law, which these claims plainly do not.

    My comments, building on what I have said before, relate to the fact that the federal courts and their critics are having difficulty in their quest to make a single, all-encompassing definition of what is and is-not an “abstract idea” such as will render claimed subject matter ineligible. What I have proposed is that both sides are trying to stuff too much into a single “definition.” This is, I think, what leads to your assertion that there is no “any means to perform a function” test spelled out in the case law relating to abstract ideas.

    (As an aside, I think that you are not correct to assert that such test is applicable to claims directed to “natural laws,” even though many such claims are likely to be directed to “abstract ideas” as well — a line of discussion for another day).

    My point is that I believe that there are different types of subject matter that are being thrown into the “abstract idea” bucket, and that the courts and the bar would be better served by attempting to parse out the different kinds of ineligible/”abstract” subject matter, rather than (as in the Alice test) attempting to force them all into a single straight-jacketed “test.”

    The claims here are abstract because they recite any-and-all instructions which achieve a purely functional goal — including many sets of instructions which the patentee has neither described nor invented. The patentee seeks to claim rights in all of those non-disclosed and not-yet-invented sets of instructions.

    This “anything-that-works” characteristic of the claim is what makes it abstract and not eligible for patenting — regardless of whether other claims which courts have thrown into the “abstract idea” bucket share this characteristic.

    The claims may also have serious 112 deficiencies, as you note, but that is not the issue in this case and does not control whether the claims are ineligible for abstractness.

    Furthermore, the factual nature of many 112 deficiencies often renders them inappropriate for resolution on a motion to dismiss, which is the stage at which this litigation ended (so far). It makes eminent sense when, as here, a claim is plainly out-of-compliance with section 101, to end the case early on ineligibility grounds, rather than impose the time and expense of discovery and further litigation on the parties (and our overloaded court system) to demonstrate that they are also invalid on 112 grounds.

  14. TFCFM November 12, 2020 12:02 pm

    Anon@#12: “He treats his favorite ‘go to’ of “what you actually invented” in flat out contradiction to how most all patent attorneys actually develop claim scope beyond picture claims.

    Don’t blame section 101 on me. Section 101 limits inventors to patenting what they invented — it does NOT authorize granting patents for anything-and-everything that performs the same function as what an inventor has invented.

    Competent patent practitioners are able to craft claims which correspond in scope to what an inventor has invented.

  15. Anon November 12, 2020 2:04 pm

    Thank you TFCFM for emphasizing that you missed the point of what I said.

    Try again, this time focus on what I said and not and what you may have wanted me to say.

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