By Michael Borella --
Plaintiff Peschke Map Technologies ("Peschke") sued Rouse Properties ("Rouse") for infringement of U.S. Patent No. 6,397,143, directed to a computer-based map navigation and display system. Rouse filed a 12(b)(6) motion to dismiss on the pleadings, alleging that the '143 patent is invalid because it claims an ineligible abstract idea. In a perfect storm of broad claims and aggressive application of the 35 U.S.C. § 101 judicial exclusions, the Court granted the motion.
Claim 1 of the '143 patent recites:
A method of presenting and providing navigation through a series of maps, comprising:
(a) providing at least one first level map depicting plural store layouts;
(b) providing description pages corresponding to each of said store layouts comprising information related to said corresponding store; and
(c) providing links from each of said plural layouts to each of said corresponding description pages whereby activation of said link causes said description page to be displayed.
On its face, this claim is rather broad, and does not explicitly require computer implementation. Nonetheless, the Court read such a limitation into the claim based on the patent's specification. Particularly, the Court described the invention as follows.
The basic iteration of the system is a map of a shopping mall that displays the location and shape of all of the different stores in the mall. Each store functions as a link that, when clicked on, takes the user to a "description page" containing information about that particular store. The system might also contain several levels of maps that permit a user to zoom in to and out of the shopping mall from a larger region or neighborhood. This system is designed to give consumers access to information about different stores using the physical layout of a mall as opposed to, for example, navigating through a list of the names of the stores at a mall.
Peschke first contended that it was improper to dismiss the claims under § 101 prior to claim construction. The Court disagreed, noting that patent-eligibility is decided as a matter of law, and that the Federal Circuit allows district courts to determine whether claim construction is needed for the § 101 analysis. Particularly, the Court stated that "the claimed subject matter is readily ascertainable from the face of the '143 patent" and proceeded to cite to a number of sections of the patent's specification in which aspects of the claims were described. The Court also observed that "nearly all of the technical terms used in the '143 patent -- including click, layout, link, hyperlink, neighborhood, region, shopping center, and store -- have been defined in the glossary section." Thus, despite its position that the claims did not need to be formally construed, the Court still carried out a form of claim construction by pointing out where, in the patent itself, claim term definitions could be found.
Not helping its argument, Peschke only suggested that one claim term needed to be defined in order to construe the claim terms. The Court further disagreed that this term required definition, and instead ruled that the motion to dismiss was not premature.
Peschke then argued that the claims were valid under § 101, which prompted the Court to review the two-prong test for patent-eligibility set forth in Alice Corp. v. CLS Bank Int'l. First, one must determine whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to something more than the judicial exception. Notably, generic computer implementation of an otherwise abstract process does not qualify as "something more."
Applying the first prong, the Court characterized the claimed invention as "an electronic map navigation system that enables a user to locate a particular store through the use of location and layout information and that provides a link to a description page containing information about the store." The invention further allows the user to "zoom in and out of larger or smaller geographic areas depicted on these maps." The Court found these ideas to be well-understood, routine, and conventional.
In coming to this conclusion, the Court was apparently persuaded by evidence introduced by Rouse relating to a 1798 map of the town of Alexandria. According to the Court, this map "depicts the layout of Alexandria and identifies the location of several structures, which have been labeled with numbers [where the] "Remarks" section of the map identifies the building that corresponds to each number." The Court ultimately found that this map "achieves the same result as the invention described in the '143 patent . . . [t]he only difference is that the process described in the '143 patent occurs on a computer and uses hyperlinks that cause a description page to appear instead of using markers that direct a user to an index or legend." Thus, according to the Court, "numbers perform the same function as the hyperlinks."
The Court also stated that "the use of multiple layers of maps that enables users to zoom into and out of a geographic area is an unpatentable abstract idea," despite the claims not reciting such language. Nonetheless, the Court found that the '143 patent admitted that such zooming was well know, and that "atlases have long provided maps of large geographic areas along with corresponding maps of smaller portions of these larger maps that contain more detail."
Peschke attempted to make an analogy between its claims and those of DDR Holdings v. Hotel.com. However, the Court quickly shot this notion down, stating that the '143 patent does not address a challenge particular to the Internet -- instead it addresses a problem from the pre-Internet world.
Thus, the claims were found to be abstract under the first prong of Alice. Moving to the second prong, the Court considered whether the claims recited an inventive concept above and beyond the abstract ideas therein. Particularly, the Court compared the '143 patent's claims to those in Benson v. Gottschalk and Diamond v. Diehr, and determined that the claims were closer to Benson. Specifically, the Court noted that the claimed invention "does not apply the abstract idea, using a computer, to a new technological process or in an otherwise new way to solve a unique problem."
Peschke contended that "when the computerized mapping system was invented it was not commonplace to use an object overlaid on a map as a hyperlink to an information page." But the Court found this to be merely the automation of the well-known process of "using a map that depicts the shapes of stores as seen from above to provide the map user with information about those different stores."
Failing both prongs of the Alice test, the claims were ruled invalid.
The outcome of this case is not surprising given the breadth of the claims, but procedurally it raises a number of issues. When performing the Alice test, the Court deviated in a significant fashion from the actual claim language, and used phrases from specification instead to represent the invention. Thus, as noted above, the Court seems to have performed a de facto claim construction.
Notwithstanding that odd approach, the Court's analogies between paper maps and computerized maps (and between numbers and hyperlinks in particular) were tenuous at best. Unfortunately, this reflects a broader trend in both the courts and the USPTO, where a software claim is held to be abstract if one can find a previously-known act or article that is tangentially similar. Moreover, the use of the 1798 map in this case is telling, as once again the notion that § 101 is to be assessed as a matter of law is undermined by the introduction of "prior art."