“The CAFC said the district court’s view ‘closely tracks the claim language’ and, ultimately, that these functions are representative of ‘mental processes that ‘can be performed in the human mind’ or ‘using a pencil and paper.’”
The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a decision of the United States District Court for the Northern District of California granting judgment on the pleadings to Google, Facebook, EMC Corporation and VMware, Inc. that PersonalWeb Technologies’ patent claims were ineligible under Section 101. The decision was precedential and written by Judge Prost.
The case has a long history and the CAFC has dealt with the patented technology before. The specific patents at issue here are U.S. Patent Nos. 7,802,310 (“the ’310 patent”), 6,415,280 (“the ’280 patent”), and 7,949,662 (“the ’662 patent”). The patents generally cover “data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.” The CAFC in 2019 sent back a decision of the Patent Trial and Appeal Board (PTAB) finding the ‘310 patent invalid as obvious over two prior art references. The CAFC vacated and remanded that decision to be reconsidered in light of the court’s finding that the Board’s obviousness analysis was inadequate, but also noted that a prior-art reference “discloses a system for using content-based identifiers in performing file-management functions, such as backing up files.” The court maintained this position in its review of the PTAB’s remand decision and the appellees subsequently moved for judgment on the pleadings that the remaining asserted claims were ineligible under Section 101.
PersonalWeb argued that the claims cover “a substantially unique, algorithm-derived, content-based identifier for all data items in a networked computer, which allows a computer within a network containing diverse computing and storage systems to locate and distribute data without knowing either the file system of any device within the network or the conventional name of any
data item.” But the CAFC adopted the district court’s analysis that the patents are directed to the following three-step process:
“(1) using a content-based identifier generated from a ‘hash or message digest function;’
(2) comparing that content-based identifier against something else, [that is,] another content-based identifier or a request for data; and
(3) providing access to, denying access to, or deleting data.”
Alice Step One
The CAFC said the district court’s view “closely tracks the claim language” and, ultimately, that these functions are representative of “mental processes that ‘can be performed in the human mind’ or ‘using a pencil and paper.’” The court cited Google and Facebook’s example of librarians, who “often locate books based on a ‘call system’ where they assign books unique identifiers based on call numbers, which change dependent on a book’s volume, etc.” to control access to and locate books. While the court noted that PersonalWeb’s claims do this in a computer environment, it said “that doesn’t transfigure an idea out of the realm of abstraction.” The court continued:
The claims’ focus, therefore, is abstract. And our cases confirm this. As explained below, each component of the claims’ three-step progression reflects a concept we have already described as abstract.
The opinion noted that the CAFC held content-based identifiers abstract in Intell. Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017). The second and third steps—comparing the content-based identifiers against other values and the data management function—are likewise abstract, said the court. It dismissed PersonalWeb’s assertion that the claims’ patented solution is “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The court explained that “both the solution (names based on content) and the problems (access to, retrieval of, and redundancy control of information) have long predated computers.” PersonalWeb also argued that the claims cover “a new way of locating and distributing data in a computer network” that improve efficiency, but the court cited to Secured Mail Solutions v. Universal Wilde in refuting that contention. The court also referenced Intellectual Ventures I LLC v. Symantec Corp., and Erie as “particularly instructive”. The CAFC concluded its step one of the Alice-Mayo inquiry by citing from Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017): “Ultimately, ‘the focus of the claims is not on . . . an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools,’” wrote the court.
Step (and Strike) Two
At step two, the CAFC said that PersonalWeb’s argument that its claims “recite an application that makes inventive use of cryptographic hashes—a use that was neither conventional nor routine prior to the patents”, fails. “That’s not something ‘more,’ let alone anything ‘significantly more,’ than the abstract idea itself,” held the court. The stated improvements simply restate the abstract ideas themselves and, even if not well known, routine or conventional, “[a] claim for a new abstract idea is still an abstract idea.’ SAP, 898 F.3d at 1163 (quoting Synopsys, 839 F.3d at 1151).” As to what else in the claims might be salvageable, the CAFC said “not much”, reiterating its precedent that merely adding computer functionality to improve a process does not make an abstract claim patent eligible.
PersonalWeb also disputed the district court’s grant of judgment on the pleadings because “fact questions created by the specification’s disclosure” made it improper, but the court said that there was no inventive concept and “no plausibly alleged innovation in the non-abstract application realm,” citing again to SAP.
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