Software Patent Found to Be Directed to Abstract Idea, But Survives § 101 Challenge with Inventive Concept
By Joseph Herndon --
Bruce Zak, an individual, sued Facebook, Inc. for patent infringement in the U.S. District Court for the Eastern District of Michigan on two of his software patents -- United States Patent Nos. 8,713,134 and 9,141,720. Facebook moved for summary judgment arguing that the subject matter of the two patents is not eligible for patent protection under § 101. The District Court denied Facebook's motion for summary judgment even though the representative claim was found to be directed to an abstract idea, since the claim was further found to recite enough details to specify how a solution will be implemented that addresses a business challenge particular to the Internet.
In the early 2000s, Plaintiff, a computer programmer, started a company called Everyware, Inc. that was focused primarily on a new software product called 7Ware. The purpose of 7Ware was to allow users to maintain a dynamic website by giving users the ability to manage the content of a website without having to depend on a person skilled in HTML computer programming. During creation of the software to enable users to post content without third party assistance, Plaintiff realized that the software would be more useful if users could control which other users could view content on the website and which other users could post content on certain web pages. In order to achieve these functions, Plaintiff developed software that generated user-configurable links based upon user-configurable business rules to control the functionality of web pages with respect to permission to view and/or post certain content.
Plaintiff filed a patent application for the invention from which the two patents in suit were granted. The patents teach a system that permits users to input characteristics into configurable applications generated by the computer and to act as administrators for different sets of web pages within the same website. The claims of these patents are directed to enabling users, without third-party assistance, to post content to a website and to control which users can view the posted content. Claim 2 of the '720 patent is representative of the patent eligibility analysis, and is reproduced below.
2. A system, including a computer and a web site, for managing content displayable on the web site to multiple users of the system who have profiles stored on the system, comprising:
at least a first configurable application and a second configurable application, wherein each of the first and second configurable applications includes content that is stored on the computer and that is displayable to the users of the web site, and wherein one of the applications is a biography application that is managed by the computer and that displays biographical information that is received from and that is about one of the users of the system;
wherein at least one of the configurable applications is generated by the computer at least in part based on inputs received from multiple users of the system, the inputs including at least one of text, graphics, sounds, documents, and multi-media content;
an administrator portal through which users of the system are permitted to act in the role of an administrator of certain web pages, wherein a user acting in the role of an administrator may manage business rules that utilize profiles of the users of the system to control interaction of the users with the certain web pages, wherein each user of the system is permitted to act in the role of an administrator at least with respect to a subset of web pages on the web site; and
at least one configurable link on the web site that points to at least one of the plurality of configurable applications,
wherein the at least one configurable link is generated by the computer based at least in part on a profile attributed to at least one user of the system and at least one rule that is configurable by a user acting in the role of an administrator and which applies user profiles to select what content stored on the computer can be viewed by which of the users of the system.
The '720 patent describes its invention as providing non-technical users control over the content of a website without the need for more technical personnel to assist and as also providing users the ability to create, modify, or delete content automatically. The claimed invention allows users to customize not only who can view the content but also who can post content. In these systems, users have stored profiles that consist of at least a first configurable application and a second configurable application, one of which is a biography application.
To summarize the '720 patent, the users of the system create profiles containing biographical information, and the user can control the interaction other users have with her web page by altering business rules that utilize the biographical information from other users' profiles. The system receives a request to view and/or post content to a website and uses the configured rule to determine whether the user can view or post content.
Defendant claims that the patents relate to "techniques for group collaboration and targeted communication," and are not patent-eligible because the claim is directed to abstract ideas with no inventive concept.
The District Court followed the two step test for determining patent-eligibility. Step one of the Mayo/Alice test "determin[es] whether the computer-implemented claims at issue here are 'directed to' a patent-ineligible abstract idea." If the court concludes at step one that the claims are directed to an abstract idea, the court must then ask at step two whether the elements of each claim, both individually and "as an ordered combination," include an inventive concept such that it transforms the nature of the claim into a patent-eligible application.
1. Evaluating Claims Under Step One
The District Court noted that determining whether a patent's claims are "directed" to an abstract idea can be difficult because the Supreme Court and the Federal Circuit have not defined precisely what an abstract idea entails. The following categories have been recognized by either the Supreme Court or the Federal Circuit as abstract ideas: (1) something that could "be performed in the human mind, or by a human using a pen and paper," (2) "fundamental economic practices long prevalent," (3) methods of organizing human activity, or (4) mathematical formulas. Courts also look to whether the representative claim is directed to the improvement of the functioning of the computer itself.
Claim 2 is directed to allowing non-technical individuals to control who is able to (1) post content and (2) view content on a number of websites. In applying step one of the Mayo/Alice test, the District Court looked to whether claim 2 is directed to the improvement of the functioning of the computer itself rather than to an abstract idea. The claim in the present case, in consideration of its limitations, does not unambiguously purport to increase speed, improve storage, or improve functionality of the computer itself.
Plaintiff argued that the claim improves the functioning of the computer due to the user-configured business rules and configurable/application links. However, the District Court found that the claim language of the patent does not clearly state how these features improve the functioning of the computer itself. The claims describe a method to manage and control posting content and viewing content; they do not suggest that a computer's functioning would be improved, but rather that a user's ability to harness that functionality would be improved. Since the claim language is less than completely clear, the District Court could not conclude with any certainty that the claim and its limitations improve the functioning of the computer itself.
The District Court determined that Plaintiff's patents are directed to group collaboration with targeted communication and restricting public access, which -- like filtering data in the BASCOM case -- are arguably methods of organizing human behavior. Consequently, the Court concluded that the representative claim of the '134 and '720 patents is directed to the abstract idea of organizing human behavior and does not clearly improve the functioning of a computer.
2. Evaluating Claims Under Step Two
If the claims at issue do not improve the function of a computer itself but instead are directed to a patent-ineligible abstract idea, courts look to step two of the Mayo/Alice test. Step two of the Mayo/Alice test searches for an "inventive concept," which is "an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'"
The District Court likened the present claims to those in BASCOM, where the Federal Circuit explained that some inventions' basic thrust might more easily be understood as directed to an abstract idea, but under step two of the Alice analysis, it might become clear that the specific improvements in the recited computer technology go beyond well-understood, routine, conventional activities and render the invention patent-eligible.
The District Court found that claim 2 in this case specifies how the websites may be manipulated to achieve a desired result. Representative claim 2 states that the system stores profiles from multiple users. The users input text, graphics, sounds, and more to create at least one configurable application that displays biographical information about the users. Each user can act as an administrator to manage business rules that permit the user to control the interaction of other users with his or her web page(s), creating a configurable link. The link will utilize user profiles to determine what content can be viewed by which users.
In the present case, the claim does not merely permit a known business practice to be performed on the Internet. Instead, the claim here specifies how a solution will be implemented that addresses a business challenge particular to the Internet, namely allowing ordinary users to maintain dynamic websites by managing the content of websites and controlling users' interactions with web pages.
The District Court further supported this decision by indicating that, similar to the claims in BASCOM, although the limitations to the claim in this case are not inventive alone, the ordered combination of these limitations is inventive because, taken together, the limitations are not routine and conventional. The claim does not simply dictate that communication must be targeted and access restricted. Instead, the claim states that users themselves will be able to control interactions on their web pages by managing business rules that will utilize profiles of other users to generate configurable links to determine how other users may interact with his or her web page. The claim and its limitations recite a specific, discrete implementation of the abstract idea.
Thus, the District Court found that this claim includes a sufficiently inventive concept to allow the conclusion that the patent is not directed to an ineligible subject matter under the Mayo/Alice test.
The District Court summarized that regardless of whether the subject matter of the patent is characterized as group collaboration with targeted communication or as restrictions on public access, the claim contains enough inventive elements to be aimed at more than a patent on the abstract idea itself.
As seen here, the District Court relied heavily on comparing the disputed claims to those of prior cases to develop support for the ultimate decision of patent-eligible subject matter. Claim 2 was found to be sufficiently directed to a specific application of group collaboration, in contrast to being directed to group collaboration generically. The Federal Circuit has helped the patent owner with the Enfish, BASCOM, and recently decided McRO cases, which together provide the patent owner with a greater chance to survive a § 101 challenge. Successful comparison of disputed claims to those in any of these three Federal Circuit cases will provide the patent owner with the best chances to survive the § 101 challenge.
Zak v. Facebook, Inc. (E.D. Mich. 2016)
Opinion and Order Denying Defendant's Motion for Summary Judgment by Judge Terrence G. Berg