In a non-precedential opinion, the Federal Circuit affirmed the district court’s ruling that the claims at issue in Easyweb Innovations, LLC. v. Twitter, Inc. (“Easyweb”) were directed to patent-ineligible subject matter. The parties agreed that claim 1, reproduced below, of the 7,685,247 patent represented the claims at issue.
1. A message publishing system (MPS) operative to process a message from a sender in a first format, comprising:
a central processor;
at least one sender account;
at least one storage area configured to store at least a first portion of the message; and
software executing in the central processor to configure the processor so as to:
identify the sender of the message as an authorized sender based on information associated with the message in comparison to data in the sender account, wherein the identification is dependent upon the first format;
convert at least a second portion of the message from the first format to a second format; and
publish the converted second portion of the message so as to be viewable in the second format only if the sender has been identified as an authorized sender.
In ruling that Claim 1 is patent-ineligible, the Federal Circuit applied the two-part Mayo/Alice framework. This framework follows a two-step test that first determines whether “the claims at issue are directed to [an abstract idea]” (step one), and if they are, then determines whether there is an inventive concept that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself” (step two).
In the first step, the Federal Circuit concluded that Claim 1 was directed to an abstract idea because the claim “merely recites the familiar concepts of receiving, authenticating, and publishing data.”[1] In the second step, the court concluded that Claim 1 does not include an inventive concept sufficient to transform the claim into a patent-eligible application because Claim 1 recited nothing more than an abstract idea executed using computer technology.
Is There a Non-Precedential Trend?
Since the end of 2015, there has been a sharp increase in the number of non-precedential decisions issued by the Federal Circuit. The charts below provide additional insight into the Federal Circuit’s use of non-precedential opinions since the June 2014 Alice decision when deciding the patent-eligibility of one or more patents (“patent-eligibility opinions”). Chart 1 illustrates the total number of non-precedential patent-eligibility opinions since July 2014. Charts 2 and 3 illustrate the total number and percentage, respectively, of non-precedential patent-eligibility opinions as compared to the total number of patent-eligibility opinions over the same period.
As illustrated in Chart 1, only one non-precedential opinion issued in each of the second half of 2015 and the first half of 2016. But there have been five such opinions in each of the second half of 2016 and the first five months of 2017. It is evident from Chart 1 that the number of non-precedential opinions issued by the Federal Circuit has increased significantly in the past year.
Further, as illustrated by Charts 2 and 3, the Federal Circuit appears to be relying increasingly on non-precedential opinions when ruling on patent-eligibility. For example, in the most recent five months, over half of the patent-eligibility opinions issued by the Federal Circuit have been non-precedential, up from approximately twelve percent one year ago.
Conclusion
There have been over forty patent-eligibility opinions since the Alice decision. An increase in the percentage of opinions that are non-precedential may indicate that the Federal Circuit believes its prior decisions have rendered clear the law surrounding patent-eligibility post-Alice. Alternatively, it may signal a lack of confidence that these opinions are based on clear or stable precedent, or some other underlying belief.
Some practitioners may disagree that the law surrounding patent-eligibility is clear and prefer more precedential patent-eligibility decisions, as evidenced by SHzoom’s recent request to make the non-precedential decision in Trading Technologies International v. CQG, Inc. (upholding the patent eligibility of claims relating to the electronic trading of stocks) precedential. However, it is likely that the Federal Circuit will continue to make many of its patent-eligibility opinions non-precedential as it begins to decide more cases that it believes are a routine application of the Mayo/Alice framework. For both plaintiffs and defendants who are looking for additional examples of claims to which to analogize an asserted claim, the increase in non-precedential opinions may represent an undesirable trend.
[1] Easyweb, at p. 4.
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