In re Eberra (Fed. Cir. 2018)

Purely Business Method Patent Found Ineligible under Section 101

By Joseph Herndon --

In an appeal from a rejection in initial examination of appellant Mark Eberra's patent application, the Federal Circuit affirmed the Patent Trial and Appeal Board's ("Board") determination that the claims are patent-ineligible under § 101.

The patent application is entitled "Business Method for Opening and Operating a National Television Network" with serial number 12/230,058 ("the '058 application").  The Examiner rejected all claims of the '058 application as patent-ineligible under 35 U.S.C. § 101 and as anticipated under 35 U.S.C. § 102.

The Board initially affirmed the Examiner's anticipation rejection without reaching the § 101 issue.  Then, on rehearing, the Board affirmed the Examiner's rejection under both § 101 and § 102.  Mr. Eberra appealed and represented himself pro se.

The '058 application describes a business method for providing a television network "that requires the masses of the general public to purchase products in exchange for being allowed to perform in television programs shown on the network."  Claim 1, which the Board treated as exemplary, reads:

1.  A process for providing a television network comprising:
    (a) opening at least one physical location for a production of a television program;
    (b) requiring at least one customer to make a purchase of a product;
    (c) allowing said customer to give a performance in said production of said television program, in exchange for making said purchase of said product;
    whereby said purchase made by said customer results in said production of said television program for said performance of said customer on said television network.

To determine whether a claim is patentable under § 101, the Supreme Court has instructed use of a two-step framework.  First, a court must determine whether the claim is directed to a patent-ineligible concept, i.e., a law of nature, a natural phenomenon, or an abstract idea.  If so, the court must proceed to step two and ask whether the elements of the claim, considered both individually and as an ordered combination, add enough to transform the nature of the claim into a patent-eligible application.

Starting at step one of the test, the Federal Circuit agreed with the Board's conclusion that the claims at issue are directed to an abstract idea, namely "promoting the purchase of a product with the incentive being a spot in a television program, i.e. product promotion."

Like the concept of risk hedging, which the Supreme Court found to be an abstract idea in Bilski v. Kappos, the Federal Circuit found that the concept of product promotion is a fundamental economic practice long prevalent in our system of commerce.

The Appellant argued that the claims are not directed to the abstract idea of product promotion and are instead directed to what the specification describes as a "new Customercast model of television" in which "the basic principle is to attract large numbers of people to perform on television, and require a purchase for the experience."  But the Federal Circuit found that the abstract nature of the claims is not altered at step one by the existence of claim limitations (much less characterizations in the specification) that add a degree of particularity to the implementation of the abstract idea.

Here, claim 1, considered as an ordered combination, simply describes a form of product promotion in which the incentive for purchasing a product is the opportunity to perform in a television program.  The Federal Circuit noted that this is more specific than the concept of product promotion, but it is no less abstract.

Turning to step two, each specific step in the claims—opening a location (which requires nothing more than finding a location), requiring a purchase, and allowing a performance in a television program—was found to be a routine television-production or advertising activity performed in a conventional way, as described in the specification.  Thus, there was no inventive concept found, and the claims in the '058 application were found to not be directed toward patentable subject matter under § 101.

Because the Court affirmed the Board's determination that the claims are patent-ineligible under § 101, they did not address the Board's decision with respect to anticipation.

In re Eberra (Fed. Cir. 2018)
Nonprecedential disposition
Panel: Chief Judge Prost and Circuiot Judges Dyk and O'Malley
Per curiam opinion

Comments

[Mark Eberra]

Joseph Herndon, I would like to point out one error in your article. The invention is not a "Purely Business Method" as you describe it in the title of your post. The court never characterized the invention as such and most important the actual inventor never described the invention as such. The invention is a pioneering, integrated, technological process. The PTAB analytically dissected the pioneering concept, and the technology from the invention, which is functionally integrated in the claims as a whole, and explicitly described in the specification and drawings. This panel of the CAFC apparently agreed with the Board that such analytical dissection at 101 of the patent statute is proper and permissible, a substantial change to patent law and Supreme Court precedent. Irregardless, the use of the term, "Business Method" in the title of the patent application has no legal effect whatsoever on the whether the claimed process meets the conditions and requirements for statutory subject matter under section 101 of the patent act.

Sincerely,

Mark Eberra

[EG]

Hey Joseph,

I second Mark's comment about not referring to this claimed invention as "purely a business method." It's bad enough that SCOTUS has given us the nonsensical Mayo/Alice framework that has NO support in 35 USC 101 as written. Let's not make it worse, especially as the patent statutes don't explicitly proscribe patents on what is alleged to be a "business method" (and which qualify as a "process"). See also 35 USC 273 in that regard.

[skeptical]

Why would a "pure" business method (and who knows what that really means) somehow be AUTOMATICALLY patent ineligible?

Was this not decided against in Bilski (with Stevens losing his majority-writing position)?

[Paul Cole]

Unfortunately Public Pair this morning did not reveal any published specification for USSN 12/230.058, nor did the esp@cenet database reveal anything. It is therefore only possible to judge the application on the basis of the single claim reproduced above.

However, I much doubt whether the claim is sufficiently transformative to fall within the "process" category of Section 101. It is difficult to see what unexpected new function or result flows from the combination of features claimed. With the utmost respect to Mark Eberra's comments (and I see from his website that he is a person profoundly deserving of respect) it is difficult to see that the process claimed falls within the field of technology as opposed to business administration.

The outcome was surely foreseeable in advance of the filing of an appeal at either stage, and prompts the question much asked in the UK during WW II: "Was your journey really necessary?"

It is unfortunate that cases of this degree of weakness continue to come before the courts, because they discredit our profession in the eyes of judges and create a string of adverse precedents that undermine the prospects for cases of more positive merit.

[Atari Man]

I think the claim cited here is anticipated inter alia by the Wayne's World movie, in which the Rob Lowe character gets a customer (the sponsor) to buy a product (the rights to produce the Wayne's World show and have his name associated therewith) in exchange for appearing on the show (which said sponsor does, as Wayne makes fun of him without his realizing he's being ridiculed), resulting in the show being produced with the sponsor appearing in the show.

So dead under 102.

I agree, though, that this shouldn't have been shot down under 101.

[Skeptical]

Mr. Cole,

Please point to me the location (in the law as written by our Congress) this "field of TECHNOLOGY" requirement that you appear to be reading into the law.