Federal Circuit Finds Three Intellectual Venture’s Patents Invalid under the Mayo/Alice Framework
The Federal Circuit recently decided a case concerning three patents owned by Intellectual Ventures I LLC (“IV”). Intellectual Ventures I LLC v. Symantec Corp., Case Nos. 2015-1769, 2015-1770, 2015-1771 (Fed. Cir. Sept. 30, 2016). The district court had invalidated U.S. Patent Nos. 6,460,050 (‘050) and 6,073,142 (‘142) and found that Claim 7 of U.S. Patent No. 5,987,610 (‘610) was patent eligible. The district court had also found that Symantec Corp. (“Symantec”) infringed Claim 7 of the ‘610 patent, leading to an $8 million judgment. On appeal, the Federal Circuit held that all three patents were patent-ineligible under 35 U.S.C. § 101.
The ‘050 patent was directed to filtering emails to address problems associated with spam and e-mail viruses. Under step one of the Mayo/Alice framework, the Federal Circuit held that the concept of “receiving e-mail (and other data file) identifiers, characterizing e-mail based on the identifiers, and communicating the characterization” is an abstract idea. Slip op. at 8. The Federal Circuit analogized these features to a “long-prevalent practice for people receiving paper mail to look at an envelope and discard certain letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the mail.” The Federal Circuit found that the patent merely applies a well-known idea using generic computers. Id. at 10. The Federal Circuit analogized the claims to other ideas that it recently found to be abstract. See BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC (Fed. Cir. 2016) (content filtering system for filtering content to prevent users from accessing certain websites); Content Extraction, 776 F.3d at 1347, cert. denied, 136 S. Ct. 119 (2015) (collecting and recognizing data within a collected data set). In applying step two of the Mayo/Alice framework, the Federal Circuit held that the patent does not “improve the functioning of the computer itself,” distinguishing the claims from those in BASCOM. Slip op. at 11-12. Thus, the Federal Circuit held that the asserted claims of the ‘050 patent were not patent eligible under 35 U.S.C. § 101.
The ‘142 patent was directed to systems and methods for post offices to receive, screen, and distribute e-mails. Under step one of the Mayo/Alice framework, the district court had analogized the asserted claims to “a brick-and-motor post office.” The Federal Circuit found this analogy useful, stating that
[s]uch mailrooms receive correspondence, keep business rules defining actions to be taken regarding correspodnence based on attributes of the correspondence, apply those business rules to correspondence, and take certain actions based on the application of business rules. Those actions include gating the message for further review, as in claim 1, and also releasing, deleting, returning, or forwarding the message.
Id. at 16. The Federal Circuit referred to the written description, in particular the Abstract, to define the scope of the invention as “[a] system, method and various software products . . . for automatic deferral and review of e-mail messages and other data objects in a networked computer system, by applying business rules to the messages as they are processed by post offices,” and held that the “142 patent itself demonstrates that the claimed systems and methods of screening messages are abstract ideas, “fundamental . . . practice[s] long prevalent in our system” and “method[s] of organizing human activity.” ‘142 Patent, Abstract. Under step two of the Mayo/Alice framework, the Federal Circuit held that the asserted claims of the ‘142 patent did not add significantly more to make the claims patent eligible because “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.” The Federal Circuit further stated that the test is not whether conventional computers apply the claimed features of the patent, but rather whether “each step does no more than require a generic computer to perform generic computer functions.” Id. at 18.
The ‘610 patent was directed to virus screening within a telephone network or the Internet. The district court had found Claim 7 to be patent-eligible, but the Federal Circuit reversed. Under step one of the Mayo/Alice framework, the Federal Circuit found virus screening to be a “long prevalent practice in the field of computers, and, as the patent admits, performed by many computer users.” The Federal Circuit then concluded that this is an abstract idea. Id. at 20. Under step two of the Mayo/Alice framework, the Federal Circuit held Claim 7 to be conventional. The Federal Circuit found that the claims merely recite a generic environment to implement the abstract idea, similar to those found patent ineligible in previous cases. See TLI Communications (Fed. Cir. 2016) (claims required tangible components such as a telephone unit and a server). The Federal Circuit also held that the asserted claim does not improve the way the computer functions, referring to the specification’s disclosure of “a conventional telephone network processor,” and a “conventional circuit-switched network elements.” Slip op. at 22.
Judge Stoll provided a dissent with respect to the ‘610 patent, noting that the ‘610 patent performs the screening centrally instead of on an end user’s computer, providing a non-conventional and non-generic architecture. Judge Stoll argued the invention improves overall security of telecommunication networks, analogizing the claimed features to BASCOM. Slip op. at 2 (dissent). Judge Dyk, in the majority opinion, disagreed and distinguished the asserted Claim 7 from BASCOM where the technology overcame existing technical problems with filtering techniques. The Dyk opinion stated that the record “does not indicate that claim 7 recites any improvement to conventional virus screening software.” Slip op. at 24.
Also noteworthy in this case is the concurrence by Judge Mayer, where Judge Mayer argues that: “(1) patents constricting the essential channels of online communication run afoul of the First Amendment; and (2) claims directed to software implemented on a generic computer should be categorically not eligible for patent.” Slip op. at 1 (concurrence).
This case illustrates the importance of filing a patent application that explicitly defines a technical problem and clearly shows how the claimed features improve a technical field. Patent applicants should be wary of statements in the specification acknowledging what is conventional, routine, generic, and known in the field. Moreover, the injection of First Amendment arguments into patent law may open new grounds for invalidating patent rights.