Avago Technologies General IP (Singapore) Pte Ltd. v. Asustek Computer, Inc. (N.D. Cal. 2016)

"Quick Look Test" Used by District Court to Support Lack of Preemption and Find Software Claims Patent Eligible

By Joseph Herndon --

On April 15, 2016, the U.S. District Court for the Northern District of California issued an Order Denying a Motion to Dismiss because the patent at issue, U.S. Patent No. 5,870,087, was found to be directed to patent eligible subject matter.

The '087 patent, entitled "MPEG Decoder System and Method having a Unified Memory for Transport Decode and System Controller Functions," is directed to methods for reconstructing frame data for memory saving benefits.  Full-motion digital video requires a large amount of storage and data transfer bandwidth.  Thus, video systems use various types of video compression algorithms to reduce the amount of necessary storage and transfer bandwidth.  Prior art MPEG video decoder systems have generally included a separate memory for transport and system controller functions.  The '087 patent describes that it has generally not been possible to combine these memories, due to size limitations.  Thus, the '087 patent describes new ways to reconstruct frame data that enables saving memory and usage of a single memory for the MPEG decoder system.

Claim 10 is representative and reproduced below.

10.  A method for performing video decoding in an MPEG decoder system which includes a single memory for use by transport, decode and system controller functions, the method comprising:
    receiving an MPEG encoded stream;
    demultiplexing one or more multimedia data streams from the encoded stream, wherein said demultiplexing one or more multimedia data streams from the encoded stream operates using a first unified memory;
    performing MPEG decoding on the multimedia data streams, wherein said performing MPEG decoding operates using said first unified memory; and
    a system controller controlling operations within the MPEG decoder system, wherein said controlling operations accesses code and data from said first unified memory;
    wherein said demultiplexing one or more multimedia data streams, said performing MPEG decoding, and said controlling operations each use said first unified memory.

The Defendant filed the Motion to Dismiss alleging that claims 1, 5, 7-11, and 16 of the '087 patent are invalid under 35 U.S.C. § 101 as not being directed to patent eligible subject matter.

The District Court followed the Supreme Court's two-step framework for determining whether there is § 101 patent invalidity.  First, it is determined whether the claims at issue are directed to a patent-ineligible concept -- i.e., a law of nature, a natural phenomenon, or an abstract idea.  If so, then the court moves on to the second step, that is, to determine if the additional elements beyond the patent-ineligible concepts (if any) transform the nature of the claim into a patent-eligible application (i.e., a search for an inventive concept -- that 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 Defendant asserted § 101 patent invalidity on the basis that the claims at issue are trying to patent an abstract idea, or an idea having no particular concrete or tangible form -- namely, integrating multiple memories into a single/unified memory.

As seen in many court orders and decisions, the District Court here complained that the step one inquiry may be a complicated matter if only because it is not clear what abstract means in the first place, and the step one inquiry is further complicated by the fact that it is not always easy to say what a patent claim is "directed to."

The District Court stated a summary of prior decisions that attempted to define how to perform step one including (1) that a court must consider the claims "in their entirety to ascertain whether their character as a whole is directed to excluded subject matter"; (2) a court must identify and define whatever fundamental concept appears wrapped up in the claims; (3) a court must identify the purpose of the claim -- in other words, determine what the claimed invention is trying to achieve; (4) a court should recite a claim's purpose at a reasonably high level of generality; and (5) a court should apply step one as a sort of quick look test, the purpose of which is to identify a risk of preemption and ineligibility.

With these varying degrees of applications of step one, in the instant case, the District Court turned to the purpose of the claims.  The District Court simply stated:

[T]he purpose of the claims at issue is to decompress digital video using a single memory.  That is the gist of the invention at issue.  Given this purpose, the Court is satisfied that there is no genuine risk of preempting future research and development -- i.e., Avago is not simply claiming an abstract idea in the attempt to lay claim to a building block of future research and development; the invention has specific configuration, not a broad abstract idea.

The District Court did not extrapolate further into the analysis, but rather stated that because the Defendant failed to establish that the claims at issue are directed to a patent-ineligible concept, i.e., an abstract idea, the Court need not address step two of Alice which embodies the inventive concept test.

Thus, Defendant's Motion to Dismiss based on a challenge to the validity of the '087 patent under 35 U.S.C. § 101 was denied.

Looking at the reasoning given by the Court of the "purpose of the claims at issue is to decompress digital video using a single memory", it is hard to see how this was not found to be an abstract idea.  Step one of the Alice test has been considered easy to show, and most courts have given little weight to any arguments, but instead focus on the step two inventive concept analysis.  But here, the District Court used preemption as reasoning to support a finding that the claims were not directed to an abstract idea.  Use of preemption as a sole reason to support patent eligibility is rare and against the USPTO guidelines.

The Federal Circuit has followed the Supreme Court's lead in rejecting arguments that a lack of total preemption equates with eligibility, at least within buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014), and Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).  Even though the District Court in this case found preemption arguments persuasive, the '087 patent claims are likely to be challenged again.

All claimed components, other than the integrated memory, appear to be admitted by the '087 Patent to be well known in the art, as indicated in the '087 patent's own "MPEG BACKGROUND" section.  Thus, had step one of the Alice test been found to be true (i.e., the claims are directed to an abstract idea), then the claims most likely would have also failed step two (i.e., inventive concept) and would have been found to be patent ineligible. 

Avago Technologies General IP (Singapore) Pte Ltd. v. Asustek Computer, Inc. (N.D. Cal. 2016)
Order Granting Plaintiff's Motion to Reconsider (Avago I); and Denying Dfendant's Motion to Dismiss (Avago II) by District Judge Edward M. Chen

Comments

[Atari Man]

"Looking at the reasoning given by the Court of the "purpose of the claims at issue is to decompress digital video using a single memory", it is hard to see how this was not found to be an abstract idea."

Say what? Unless one has drunk deeply from the SCOTUS Alice Kool-Aid, how is decompressing digital video abstract? Like the judge, I don't see anything abstract there, and I don't see further research being preempted by this claim.

It appears to me that this judge did the eminently reasonable thing of taking the inscrutable pronouncements of SCOTUS regarding 101 and limiting them to the most egregious cases, of which the claims here are not examples. Kudos to the judge for effectively ignoring the misguided decisions of the CAFC and so many other district courts, but for writing his decision using language that makes it appear he's hewing to the Alice line when he's clearly not.

If anything, the reasoning in this denial of a motion to dismiss should be upheld as a model of how judges should work to turn Alice and Myriad into dead letters.

The possibility for invalidating the claims on 102, 103 and 112 grounds - remember those? Some people may have forgotten them, since this is a song about Alice - is still wide open. Just on my first read-through of claim 10, I see a glaring 112 issue in the wording of the claim itself (mixed structure/method steps in a single claim).

I'm 99% certain the CAFC will, unfortunately, overturn this correct 101 decision, instead of learning from it. Nevertheles, the decision itself gives me hope - there's at least one judge who's willing to say the king (or in this case, Queen Alice) has no clothes.

[EG]

"As seen in many court orders and decisions, the District Court here complained that the step one inquiry may be a complicated matter if only because it is not clear what abstract means in the first place, and the step one inquiry is further complicated by the fact that it is not always easy to say what a patent claim is "'directed to.'"

All too true about the broken Alice test, especially step 1. This "directed to" nonsense in step 1 just encourages the lower courts to either paraphrase what's in the claim (in contravention of what is required by 35 USC 112), dissect the claim to find the alleged "patent-ineligible concept" (in contravention of the command in Diehr not to do so), or both. How many times must the lower courts "complain" that this test is "void for vagueness" before SCOTUS listens? And all of this mess lies squarely at the feet of Our Judicial Mount Olympus who created this nonsensical Mayo/Alice framework out of "thin air."

I also agree Atari Man comments: lower courts should use this decision to cabin the Mayo/Alice framework. Starting with step 1, the Alice test is broken at the outset, including no definition from SCOTUS as to what "abstract idea" means.

[MaxDrei]

Crikey. The appellation "abstract" is even more vague than I had thought. When Mr Herndon (a graduate elecrical engineer) writes that it is "hard to see" how decompressing digital video is anything other than "abstract" my eyebrows shot up. Is that your honest opinion Mr Herndon? Is it really "hard" for you? Or are you deliberately (provocatively?)stretching the SCOTUS term "abstract" to the broadest interpretation you possibly can? If so, why might that be?

[Joe Herndon]

What I meant (and should have written to be complete) is that it is hard to see how the court found this claim to be patent eligible in view of how the Federal Circuit has been treating these types of claims (i.e., most anything is considered abstract and then the battle is whether the claims recite an inventive concept). And, further in view of other court's treatment heavily against "preemption" arguments, it was surprising to see a preemption argument win the day.

Although it hasn't come through in the post, you can mark me down as pleased with this decision, and hopeful that other courts follow suit.

[The Memory Motel]

LOL

You gotta love the patent maximalists and their endless efforts to undo what is never going to be undone.

Now they are citing not only the cases that *do* find junky claims ineligible to support their cause, but also the cases that *don't* find claims ineligible.

Thankfully it doesn't smell like desperation at all. Nope. Not at all.

LOL

[The Memory Motel]

Atari Man: "The possibility for invalidating the claims on 102, 103 and 112 grounds - remember those? Some people may have forgotten them"

Nobody's forgotten them.

[The Memory Motel]

"The Defendant asserted § 101 patent invalidity on the basis that the claims at issue are trying to patent an abstract idea, or an idea having no particular concrete or tangible form -- namely, integrating multiple memories into a single/unified memory."

That's an eminently reasonable argument given these incredibly junky functionally-"limited" claims, when read in view of the prior art.

But let's not discuss that! Wouldn't be prudent. Let's just shake our fists at the sky: "Gosh darn you, common sense!"

[The Memory Motel]

MD: " it is "hard to see" how decompressing digital video is anything other than "abstract" my eyebrows shot up. "

My eyebrows didn't move at all.

Manipulating digital information by performing math on it is just about as abstract an operation as one can perform. And that's all that's happening here. Plus "unified memory", repeated no less than four times in four short clauses -- LOL.

[skeptical]

An "MM" infestation...

Get well soon, PatentDocs.

[MaxDrei]

MM writes:

"Manipulating digital information by performing math on it is just about as abstract an operation as one can perform. And that's all that's happening here."

My eyebrows shot up, once again, when I read that "all" that in the claim all that is "happening" is math, performed on digital information. I think you can overdo this "at bottom" stuff. All biology is chemistry, all chemistry is physics, and the language of physics is mathematics. So you can dismiss any technology under the sun with the throwaway that all that's "happening" is math. Sorry, but I see that assertion as not so different from the one about there being Turtles All the Way Down" and just as unhelpful about drawing the line on patent eligibility.

The Diehr case was a long time ago, so the data there was analogue, I suppose. But would it make a decisive difference to eligibility if it had been digital, that in such a case, all that was "happening" was math?

MM, I forget your position on Diehr. Was it correctly decided? If so, is that because in Diehr i) the data was analogue, or ii) the claim was directed to enhancing how to mold rubber whereas, here, the claim is to directed to enhancing how a MPEG video decoder runs. Or perhaps because iii) the eligibility of the claim here decisively depends on the meaningless, abstract, nonce word "unified"?

I'm not a computer programming specialist but my gut reaction would be on iii) to agree with you.

[GrzeszDeL]

"[W]ould it make a decisive difference to eligibility if [Diehr] had [involved] digital [technology], that in such a case, all that was 'happening' was math?"

MM can answer for himself, of course, but from where I am standing, it is not helpful to ask "how is this analogous to Diehr?". I think that we must face facts: Diehr is not the law anymore.

This is not just my opinion. In the oral arguments on Monday for FairWarning IP, LLC v. Iatric Systems, the patentee argued Diehr as authority for the 101 eligibility of their claims. Judge Lourie shot that argument down on the grounds that Diehr was questionable in view of Alice, and asked the patentee for another case (the patentee rather half-heartedly coughed up DDR as their next best case, although they could not offer any explanation as to why their claims were like DDR's).

I think that post-Alice one relies on Diehr at one's own peril. It is prudent to treat Diehr as---at best---limited to its own facts and at worse as overruled sub silentio.

[The Memory Motel]

MD: "you can dismiss any technology under the sun with the throwaway that all that's "happening" is math. "

No, you can't. You absolutely can not do that, at least not to a patent claim in the United States. But you can dismiss "technology" that is nothing more than massaging digital information with math. That's because "new math" is ineligible subject matter. New chemcicals, on the other hand, are not ineligble subject matter. That's a huge legal distinction and it's one that you cant gloss over (but go ahead: try again!).

"forget your position on Diehr. Was it correctly decided?"

Diehr's patent was obvious junk.

[MaxDrei]

OK Grz and MM, I'll try again.

Let's put Diehr to one side. Let's think instead about digital imaging of bits of the human body, by X-ray, CT or NMR. Am I to understand that processes of getting better quality images by improved data gathering are eligible, but that innovative ways of processing the gathered data are not (because all that's happening is math)?

[GrzeszDeL]

I think that under the correct interpretation of section 101, both could be patentable (obviously it depends on the prior art).

However, under the new Alice regime, I expect that the second is almost certainly not patentable (cue the "groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry," quote from Myriad), and the first is likely suspect as well.

[skeptical]

GrzeszDel,

Do me a favor and clarify between "not patentable" and "not eligible."

One aspect that is seriously being obscured in the ongoing discussions is the significant fact that these are separate legal concepts.

Yes, no one is saying that any one given claim may fail both concepts, but it is clear legal error to pretend that there is no difference between the two sections of law and the two meanings of those sections.

Thanks,

[GrzeszDeL]

"clarify between 'not patentable' and 'not eligible'"

I am not sure why you are asking me to define a term ("not eligible") that I did not use. If you think that there is a distinction to be made here, perhaps you should make it?

I suppose that one ordinarily speaks of § 101 as defining "subject matter eligibility," so to be "ineligible" would imply non-conformity with § 101 (even if the claim were otherwise compliant with §§ 102 & 103). However, §§ 101, 102, & 103 all hold themselves out as defining the requirements of patentability ("§ 101 - Inventions patentable," "§ 102 - Conditions for patentability; novelty," & "§ 103 - Conditions for patentability; non-obvious subject matter"). I suppose that this would imply that "unpatentable" means non-conforming with at least one of §§ 101, 102, & 103.

If this is the distinction that you have in mind, then this would be as much as to say that all ineligible inventions are ipso facto unpatentable, but not all unpatentable inventions are ipso facto ineligible.

Is that the distinction you have in mind?

[skeptical]

GrzeszDeL,

I ask to make certain.

I was not sure if you are one of those who eagerly mix and match those two different terms.

So while there is a semantic difference (of course), in that each of 101, 102, 103, 112 etc use different legal reasoning, the title and body of 101 itself presents the distinction.

The title of 101 as to patentability is just that: a title (see the portion of 101 that states: subject to the conditions and requirements of this title). The conditions and requirements that such speak of are outside of 101 - hence, what is within 101 is indeed separately grouped from the rest.

So to answer your last question, yes - there is a very real difference in meaning between ineligible and unpatentable. When discussing 101 as an entity unto itself - regardless of the title, it brings the necessary clarity to use the eligibility nomenclature.

Another way of thinking of this is to think of 101 as a front gate to the rest of the statute.

Certain items - here thinking explicitly about the Fine Arts do not get through the front gate, so it makes no sense to even attempt to talk about "novelty" or "obviousness" of such things. The other side of the gate is inapplicable because such things do not even get through the gate to see those sections of law.

[Kevin E. Noonan]

Max: Despite Judge Lourie's statement I think SCOTUS would take issue that Diehr is no longer good law. Justice Breyer merely said that the Mayo claims were closer to the facts in Flook than the facts in Diehr.

Maybe Sequenom will sort this out

Thanks for your comments

[skeptical]

A closer look at the decision reveals this:

"Unfortunately, the fundamental concept or purpose of a claim can be expressed at varying
levels of generality or specificity, which could then impact whether it is directed to an abstract
idea (i.e., the more general the purpose, the more likely to be abstract). Cf. TriPlay, Inc. v.
WhatsApp Inc., No. 13-1703-LPS, 2015 U.S. Dist. LEXIS 55068, at *27 (D. Del. Apr. 28, 2015)
(noting that “the Alice step one analysis can turn on how far a court goes in peeling back a claim's limitations while trying to divine what the claim is „really‟ directed to”). One district court has implicitly tried to give some more concreteness to the step one inquiry, stating that “[c]ourts should recite a claim‟s purpose at a reasonably high level of generality. Step one is a sort of „quick look‟ test, the purpose of which is to identify a risk of preemption and ineligibility.” Id."

To which, I must ask:

What exactly is a "reasonably high level of generality"....?

Here, THIS COURT decided that "Gist" means "purpose" - but where does that come from, and on what basis are these terms determined (the same question as to what does "reasonably" mean in "reasonably high level")...?

And how does all of this impinge on the STANDARD method of claim development employed by nearly all practitioners of investigating what the inventor at first blush thinks that there invention is (OFTEN this merely being one aspect or instance of a larger, and more valuable invention), and THEN climbing the "ladders of abstraction" to reach a "reasonable high level of generality"....?

The Court here - under the "guise" of 101 seems to be attacking the very nature of patent claim writing.

Courts have no basis - EITHER from Congress or the Supreme Court for a discernible (repeatable), let alone something that can be known a priori, SCALE and point at which a threshold is crossed between a valuable (and appropriate) rung on the ladder of abstraction and a step too high which throws EVERYTHING away.

More and more, the scrivining of the Supreme Court is ringing the unconstitutional bell of "Void for Vagueness."

[skeptical]

...and almost forgot....

How is ANY one part of the claim dismissed from being NOT a part of the purpose of the claim?

See 35 USC 112(b):

(b)Conclusion.—
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter...

..which the inventor or a joint inventor regards as the invention.

So why are the courts deciding that something else is the purpose of the invention, when the direction from Congress has NO such ideology (much less, any set of directions as to what is and what is not acceptable)...?

Let me make this clear for the courts: the purpose of the claim (ANY claim) is to set forth what the inventor or a joint inventor regards as the invention for which patent protection is being sought.

[skeptical]

...agh...

Who exactly is anointed to decide exactly what a "building block of ingenuity" is?

Where is a (a priori) listing so that applicants know what not to claim?

Are not ALL patents - as defined - MEANT to be "building blocks of ingenuity"...? After all, the reason why we have a patent system in the first place is to promote, capture, and after the designated time period, openly share the "building blocks of ingenuity."

What jiggery pokery is this?