By Michael Borella --
Wordlogic brought an action against Fleksy in the Northern District of Illinois, alleging infringement of U.S. Patent Nos. 7,681,124 and 8,552,984. Flesky moved to dismiss the case under Rule 12(b)(6), on the grounds that the asserted claims lacked subject matter eligibility. Presiding Judge Lefkow of the Northern District denied the motion.
Wordlogic manufactures and sells iKnowU, a predictive keyboard application for mobile devices. According to the Court, "[b]ased on the letters a user is typing, iKnowU predicts the next most likely letters, words, and phrases, allowing the user to complete the text she wishes to enter on the mobile device using fewer keystrokes." This product is covered by claims of both patents-in-suit. Flesky also manufactures and provides a predictive keyboard application, and Wordlogic alleged that this application infringed on claim 19 of the '124 patent and claim 1 of the '984 patent.
As an example of these two claims, claim 19 recites:
A computer-readable medium comprising codes for directing a processing unit to process text entered into a personal computing device, by:
(a) receiving and displaying a partial text entry, comprising receiving at least part of the partial text entry via a keyboard, the partial text entry comprising at least a first character;
(b) in response to receipt of the first character of the partial text entry, obtaining a plurality of completion candidates from among a group of completion candidates, wherein each of the plurality of completion candidates includes a portion matching the partial text entry;
(c) displaying the plurality of completion candidates in a search list within a graphical user interface;
(d) detecting user input corresponding to selection of a particular completion candidate from among the plurality of completion candidates displayed in the search list;
(e) modifying the display of the partial text entry to correspond to the particular completion candidate selected from among the plurality of completion candidates at least while the particular completion candidate remains selected;
(f) detecting modification of the partial text entry by the user via the keyboard;
(g) obtaining and displaying in the search list a modified plurality of completion candidates from among the group of completion candidates, if the partial text entry is modified via the keyboard, wherein each of the modified plurality of completion candidates includes a portion matching the partial text entry; and
(h) obtaining and displaying in the search list a further modified plurality of completion candidates from among the group of completion candidates, if a completion candidate is accepted via the search list from the modified plurality of completion candidates, wherein each of the further modified plurality of completion candidates includes a portion matching the accepted completion candidate.
The Supreme Court's Alice Corp. v. CLS Bank Int'l case set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under 35 U.S.C. § 101. One must first decide 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 decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But generic computer implementation of an otherwise abstract process does not qualify as "significantly more." On the other hand, a claimed improvement to a computer or technological process is typically patent-eligible.
Flesky contended that claim 19 was directed to the abstract idea of "listing word completion candidates based on partial information." Flesky further made analogies between the claimed invention and the games of Hangman and Wheel of Fortune (i.e., contending that individuals playing these games would create word completion lists in their minds). Wordlogic countered that Flesky's characterization of the claim was at too high a level. The Court agreed with Wordlogic.
The Court acknowledged that procedures for "analyzing information by steps people go through in their minds, . . . without more, [are] essentially mental processes within the abstract-idea category." Nonetheless, the Court did not acquiesce in Flesky's analogy. To that point, the Court found "no reasonable scenario in which a mobile device user would type the first letter of a word she wishes to enter, then consult a list of possible completion candidates, then return to entering the text, for she would already know what her intended text was."
Wordlogic also argued that claim 19 was an improvement to computing systems as it was more efficient and less time consuming than previous text entry mechanisms. Flesky attempted to take the position that the invention improved the user experience rather than the mobile device upon which it operated, but eventually conceded that virtually any application on a mobile device improves the function of that device.
Summing things up, the Court wrote that "[i]f less time is required to enter text, then less time is required to operate the device . . . . Plaintiffs argue, therefore, that claim 19 improves the operation of the device." Since Flesky failed to rebut this point, the Court ruled that dismissal on the pleadings was premature, and Flesky's motion was denied.
For better or worse, one of the key aspects of the § 101 analysis post-Alice is whether a challenger can convince the finder of fact that an analogy exists between a claimed procedure carried out on a computer and a previous procedure that had been carried out mentally or manually. As the Court noted, carrying out the claimed auto-completion procedure mentally makes no sense. Additionally, while entering text one character at a time arguably existed in analog typewriters, there is no evidence that these devices supported displaying "a plurality of completion candidates" or "selection of a particular completion candidate from among the plurality of completion candidates."
Furthermore, Wordlogic provided a textbook rebuttal of a patent-eligibility contention. First, Wordlogic attacked Flesky's shaky step one position, and then established that the claimed invention was an improvement to a computing device under step two. These arguments, and Flesky's inability to provide a convincing response, won the day.