Patent Ineligibility and Purely Functional Claim Language
The Federal Circuit recently issued its decision in Affinity Labs of Texas, LLC v. DirecTV, LLC,[1] which provides additional guidance as to what constitutes patent eligible subject matter under 35 U.S.C. 101.
Affinity Labs of Texas, LLC owner of U.S. Patent No. 7,970,379 (“the ‘379 patent”), brought a patent infringement suit against nine defendants, including DirecTV, alleging that the they infringed the claims of the ‘379 patent. The claims of the ‘379 patent are directed to a broadcasting system “in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content.[2]
The district court held that the claims of the ‘379 patent were invalid under 35 USC 101 and applied the two-step test recited in Alice, wherein a court must determine (1) whether the claim is directed to a patent ineligible concept, such as an abstract idea, and if so, (2) whether the elements of the claim transform the abstract idea into a patent-eligible application. Specifically, the district court concluded that the claims were directed to an abstract idea that lacked an inventive concept.[3]
The Federal Circuit affirmed and also applied the two-step test set forth in Alice. In regards to the first step, the Court concluded that the claim was directed to the abstract idea of “providing out-of-region access to regional broadcast content” that has been commonplace since the late 20th century and is “untethered to any specific or concrete way of implementing it.”[4] The Court also concluded that the claim was directed to the “function of wirelessly communicating regional broadcast content” rather than to a “particular way of performing that function.”[5] In addition to analyzing the claims, the Court noted that “even if all the details contained in the specification were imported into the ‘379 claims, the result would still not be a concrete implementation of the abstract idea. In fact, the specification underscores the breadth and abstract nature of the idea embodied in the claims.”[6]
In analyzing the inventive concept, the Court concluded that the “claim simply recites the use of generic features of cellular telephones, such as a storage medium and a graphical user interface, as well as routine functions, such as transmitting and receiving signals, to implement the abstract idea. That is not enough” to transform an abstract idea into patent eligible subject matter.[7] The Court also noted that even if the use of a “downloadable application for presenting a graphical user interface on a cellphone capable of listing contents for streaming” was novel, the claim fails to recite how the content gets displayed.[8] Therefore, the “user-downloadable application does not constitute an inventive concept sufficient to render the claims patent eligible.”[9]
This case illustrates that the court will review, in both steps of the Alice test, whether the claims recite language describing how the system or method performs a particular function. Even if the claims recite novel elements, claims described in a purely functional manner are often deemed patent ineligible.[10] Therefore, claims should recite how the method or system performs a particular function, as opposed to simply reciting the particular function of a system or method. This case also illustrates that the courts will utilize the specification to support an argument that a claim is directed to an abstract idea. Thus, the specification should include all necessary technical description.
Footnotes
