Federal Circuit Kills PersonalWeb’s ‘Content-Based Identifier’ Patent Claims Under 101

By Eileen McDermott
August 12, 2021

“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.’”

https://depositphotos.com/35440567/stock-photo-ineligible-warning-road-sign-illustration.htmlThe 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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The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 15 Comments comments. Join the discussion.

  1. Anon August 12, 2021 6:22 pm

    From page 10 (emphasis added):

    We therefore conclude that the claims are directed to the use of an algorithm-generated content based identifier to perform the claimed data-management functions, which across the three patents include controlling access to data items (the ’310 patent), retrieving and delivering copies of data items (the ’280 patent), and marking copies of data items for deletion (the ’662 patent).

    These functions are mental processes that “can be performed in the human mind” or “using a pencil and paper.”

    WTF

    let me know when a human mind can actually enter a networked computing system and do ANY of:
    controlling access to data items;
    retrieving and delivering copies of data items; and
    marking copies of data items for deletion

  2. concerned August 12, 2021 7:19 pm

    These decisions are both inconsistent and illogical.

    The court ruled in this decision that BOTH the solution and problem existed before computers, therefore, the claimed process needs to improve the computer itself to be patent eligible. That slapping a computer on the known problem and known solution process does not save the day since the computer was not improved.

    In other situations, the solution was not known before computers and such a fact was admitted by all parties. Yet the authority still argues the claimed process used a computer, therefore, the computer has to be improved even though a solution to a long sought problem was achieved. Such an argument is inconsistent and illogical as patents. Computers did not even exist when patent law was legislated.

    Is the authority who advances such nonsense really that out of touch or is there a hidden agenda?

  3. concerned August 12, 2021 7:34 pm

    Anon:

    I also received that mental process argument on my patent application even though millions of working professionals, attorneys and experts could not solve the problem for decades. I do assume that all those million plus individuals had brains.

    And for a court to suggest that all those millions of working professions, attorneys and experts with brains failed to intentionally solve the problem even though they could have solve the problem, the same would be conspiracy to commit Medicaid and Social Security fraud.

    I posed that scenario to my first patent attorney and asked him “How would the USPTO/PTAB respond to such a statement?” His response “It would not be addressed.”

    Of course not!

  4. Pro Say August 12, 2021 9:05 pm

    PersonalWeb was robbed blind.

    Blind.

    And anyone with even half an eligibility brain knows it.

    Including these shameless infringers.

    Including their shameless attorneys.

    Neither the Dist Ct nor the CAFC ever — EVER — identified a / the — ONE — SCOTUS-required short, simple, preempting (alleged) abstract idea.

    Never.

    These judges — and their patent-hating, Big Tech loving brethren — should be absolutely ashamed at what they’ve done; and repeatedly and continue to do to innovation.

    Absolutely ashamed.

    Congress? SCOTUS? Where the h.e.l.l. are you?

    Where are you?

  5. Night Writer August 13, 2021 4:12 am

    This is just a tragedy that the CAFC has turned into a tyrannical behemoth that spouts out nonsense to justify their actions.

  6. Night Writer August 13, 2021 4:18 am

    >>LOURIE, PROST*, and REYNA

    So Prost has absolutely no science training and her understanding of the information age is about at the level of a five year old’s.

    Renya absolutely no science training and hires clerks to kill patents.

    LOURIE science trained six decades ago in biology. Couldn’t explain the Church-Turing Thesis if his life depended on it. Doesn’t understand modern innovation or science where people write about what is new and possible–so no understanding of 112. Thinks of computers like J. Stevens as something that you tell a clerk what to do and they program it to do it.

  7. TFCFM August 13, 2021 9:35 am

    One more nail in the coffin of “Anything And Everything That Works To Achieve My Goal” type claims.

    One wonders how many more such corpses lurk among issued patents (and why fools keep throwing good money into the bottomless pit of trying to enforce such corpses).

  8. Peter Fenner August 13, 2021 11:08 am

    The whole idea was explained in the US 5490286 patent filed three – decades ago!

  9. Pete Fenner August 13, 2021 11:12 am

    Correction to my jsut previous post: The correct US Patent number is 5,490,258 – titled “Associative memory for very large key spaces.”

  10. ipguy August 13, 2021 3:50 pm

    @6

    “So Prost has absolutely no science training and her understanding of the information age is about at the level of a five year old’s.”

    Tell me again, which of the SCOTUS justices has science training? Even Justice Barrett (who majored in English literature), as relatively young as she is, likely has an understanding of the information age that is below the level of a five year old’s (to use your phrase). Justice Kavanaugh studied history as did Justices Roberts, Kagan and Sotomayor. Justice Breyer studied philosophy. Justices Gorsuch and Alito studied political science (well, at least “science” is in the name, right?). Justice Thomas was an English major. There you have it.

    Do you believe that any of the SCOTUS Justices have a better grasp of science and technology than any judge serving on the Federal Circuit? I don’t believe so, yet so many patent practitioners seem to believe that the SCOTUS is somehow better equipped to lead them through the quagmire than the Federal Circuit.

    For right or for wrong, the litmus test for SCOTUS Justices is whether or not they want to keep or overturn Roe v. Wade; not whether or not they understood technology and science.

  11. Anon August 13, 2021 6:16 pm

    yet so many patent practitioners seem to believe that the SCOTUS is somehow better equipped to lead them through the quagmire than the Federal Circuit.

    And then there are those of us much much wiser who know that the primary blame for patent law mess rests squarely with the Supreme Court.

  12. Night Writer August 14, 2021 3:34 am

    @10 Ipguy

    Really strange response to my post. I am not hopeful the Scotus will help us out. They wrote Mayo/Alice. I am not looking to the Scotus to save us.

  13. Curious August 15, 2021 10:38 am

    Do you believe that any of the SCOTUS Justices have a better grasp of science and technology than any judge serving on the Federal Circuit? I don’t believe so, yet so many patent practitioners seem to believe that the SCOTUS is somehow better equipped to lead them through the quagmire than the Federal Circuit.
    I think very few patent practitioners think that SCOTUS is “better equipped” regarding issues involving science and technology as compared to the Federal Circuit. Rather, there are some patent practitioners that hope that SCOTUS does not have the inherent bias against technology that many at the Federal Circuit have exhibited time and time again (it is somewhat akin to we definitely know the ‘devil’ in Federal Circuit and we hope that the ‘devil’ at SCOTUS isn’t as bad). The hope is that if the right issue was presented in the right way by the right party that SCOTUS would fixed the mess that they created.

    Personally, I don’t see any of that happening. The conservative (and controlling) wing of SCOTUS is nearly as anti-patent as the liberal wing. I cannot recall anytime in the recent past when either Thomas or Alito voted for expansive patent rights. Unfortunately, I don’t see any improvements in the near term.

  14. ipguy August 16, 2021 3:28 pm

    @12

    How was it strange? You were complaining about the science training of Federal Circuit judges and I pointed out that the SCOTUS Justices were no better, and you agree with me.

  15. B August 19, 2021 5:56 pm

    @ ipguy “For right or for wrong, the litmus test for SCOTUS Justices is whether or not they want to keep or overturn Roe v. Wade; not whether or not they understood technology and science.”

    1000% correct. I don’t think a single justice could pass an 9th grade multiple choice science exam or fix a flat tire. Outside Thom Tillis, I don’t think a single senator on the judiciary committee could either.

    @ concerned “The conservative (and controlling) wing of SCOTUS is nearly as anti-patent as the liberal wing.”

    You need to re-read Bilski. I’m not saying the conservative wing knows what they’re doing (they don’t), but Sotomayor and Kagan are completely out to lunch.

    Just slightly off topic: Tiffany Cunningham was affirmed by the Senate. She should be sitting for oral arguments soon. Let’s hope Cunningham is another Kimberly Moore.

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