[PPT] - ALICE - ONE YEAR LATER LES - Silicon Valley Chapter July 22, 2015 PowerPoint Presentation

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ALICE - ONE YEAR LATER

LES - Silicon Valley Chapter July 22, 2015

Panelists: Michael Zachary Matt Wade John Cabeca Sandy Godsey Ivan Chaperot

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398 DSAWD

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Introduction

CLS Bank v. Alice (U.S. Supreme Court 2014)
Two Step Test:
1) is the claim “directed to” a patent-ineligible

abstract idea

2) do the elements of the claim—considered both

individually and as an ordered combination— transform the nature of the claim into a patent- eligible application of the abstract idea

“inventive concept”— must be something

sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself

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Case Filing Statistics: All District Courts

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Case Filing Statistics:

D. Del, N.D. Cal, C.D. Cal & E.D. Tex

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Case Filing Statistics: D. Del

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Case Filing Statistics: N.D. Cal

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Case Filing Statistics: C.D. Cal

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Case Filing Statistics: E.D. Tex

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Chronological Overview of post-Alice Federal Circuit Decisions

Digitech Image Technologies LLC v. Electronics for Imaging Inc.,

758 F.3d 1344 (Fed. Cir. 2014) (Invalid)

Planet Bingo, LLC v. VKGS LLC, 576 Fed.Appx. 1005 (Fed. Cir.

2014) (Invalid)

BuySAFE Inc. v. Google Inc., 765 F.3d 1350 (Fed. Cir. 2014)

(Invalid)

Ultramercial LLC v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)

(Invalid)

DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.

2014) (Valid)

Content Extraction and Transmission LLC v. Wells Fargo Bank

NA, 776 F.3d 1343 (Fed. Cir. 2014) (Invalid)

OIP Technologies, Inc. v. Amazon.com, Inc., No. 2012-1696,

2015 WL 3622181 (Fed. Cir. June 11, 2015) (Invalid)

Internet Patents Corp. v. Active Network, Inc., No. 2014-1048,

2015 WL 3852975 (Fed. Cir. June 23, 2015) (Invalid)

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Federal Circuit’s DDR Decision

DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)

Patent found eligible under Section 101
Claim language:
“using the data retrieved, automatically generate and

transmit to the web browser a second web page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page.”

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Federal Circuit’s DDR Decision

Did not decide Step 1 of Alice analysis:
Noted that the claims did not recite a mathematical

formula, or a long-standing commercial practice.

But did not rule whether the patent claimed an

“abstract idea”

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Federal Circuit’s DDR Decision

Held that Step 2 was satisfied
“The claimed solution is necessarily rooted in computer technology

in order to overcome a problem specifically arising in the realm of computer networks”.

In particular, the ′399 patent’s claims address the problem of

retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after “clicking” on an advertisement and activating a hyperlink.

Further, unlike in Ultramercial, the patent does not broadly claim use
f the internet to perform abstract business practices.
The claims specify how the interactions with the internet are

manipulated to yield a desired result – a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.

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Abstract Ideas across the Atlantic

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1) S 1) Subject-M bject-Matter tter Eligibility ligibility Statutory categories of invention from 35 U.S.C. § 101 (process, machine, manufacture, or composition of matter). 2) J 2) Judicial E dicial Exceptions ceptions A) Laws of nature, natural phenomena, and abstract ideas. B) Amount to significantly more than the judicial exception? 1) T 1) Technical chnical Character Character The term “invention” in Art. 52(1) EPC interpreted as implying a requirement of technical character. “Technical solution to a technical problem”. 2) E 2) Excluded cluded Subject bject Matters tters

Art. 52(2) EPC: discoveries, scientific

theories […] presentations of information.

Art. 52(3) EPC: only excluded “as such”

US Europe

SLIDE 15

Case Law Trends

The “rooted in computer technology” rationale of DDR

requires:

Innovative and new use of internet or computer networks,
etc. to solve a problem unique to that context
This innovative aspect must be specifically defined in the

claims, not just claiming use of the internet or computer or computer network in a generic way

The claims must be directed towards some improvement

in the functioning of the computer or some technological area, or must override the routine, conventional sequence

f events associated with the computer or network’s
perations.

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Case Law Trends

An overwhelming majority of invalidations

appear to involve abstract ideas being implemented on a generic computer.

This rationale accounts for more

invalidations than all others combined.

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Case Law Trends

Specificity in claims is important.
Courts have uniformly stated that functional language is insufficient,

because it usually means that there is nothing inventive about the claims.

E.g., Loyalty Conversion Sys. Co. v. American Airlines Inc., No. 2:13–

CV–655, 2014 WL 4364848 (E.D. Tex. Sept. 3, 2014)

Claiming the end result, as opposed to the steps to get there (which is

where any inventive concepts will be found in the abstract idea context) will almost always result in invalidation.

Even if the spec provides support, limitations are not read into the claims.
Also, patentees and litigants should beware of language consisting of

generic hardware as these often times may only serve to underscore the generic nature of the hardware and the function it performs.

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Trends – Step One Analysis

The first step of the Alice test is determined by looking at

the purpose of the claims.

Generally a broader, “quick look” type of inquiry.
Courts will often determine if claims are directed to

abstract ideas merely by comparing them to the claims at issue in Alice and Bilski.

The court does not filter out claim elements found in prior

art and evaluate the remaining elements for abstractness.

Exception: McRo case in CD Calif (heavily criticized)

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Trends – Step Two Analysis

Most courts do not rely heavily on the machine or

transformation test

Exception: Delaware.
E.g., TriPlay, Inc. v. WhatsApp Inc., No. CV 13-

1703-LPS, 2015 WL 1927696 (D. Del. Apr. 28, 2015)

Most courts do not try to determine the extent to which

an invention may “preempt” the field of the abstract idea, since such an inquiry is inherent in the second step of the Alice test

Exception: CD Calif.
Cal. Tech., 59 F. Supp. 3d 974 (C.D. Cal. 2014)

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Trends – Step Two Analysis

Courts in most districts have started looking to the

“rooted in computer technology” rationale of DDR

Do the claims:
“purport to improve the functioning of the computer

itself or effect an improvement in any other technology or technical field” or

“override the routine and conventional sequence of

events in order to cause some deviation from a computer or network operating in its normal, expected manner.”

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Analysis of Specific Claims Held Patentable

California Inst. of Tech., 59 F. Supp. 3d 974 (C.D. Cal.

2014)

Patent claimed a method for encoding and decoding data

in accordance with IRA codes as patent eligible subject matter.

Step 1 of Alice analysis:
Abstract: “Encoding and decoding data are long

standing steps in the process of error correction”.

Although the claims were directed to one specific

method of error correction, step one looks only to the general purpose of the claims.

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Analysis of Specific Claims Held Patentable

In step two, inventive concepts made claims patentable.

Cla Claim A method comprising: A method comprising: receiving receiving a collection a collection of message

f message bits

bits ha having ving a first a first sequence in sequence in a source data a source data strea stream; generating generating a sequence a sequence of parity

f parity bits,

bits, wherein each wherein each parity bit parity bit “x “xj” in ” in the the sequence is sequence is in in accordance accordance with with the formula the formula xj=xj-1+∑i=1 xj=xj-1+∑i=1λ v(j-1) v(j-1) λ+i, +i, where where “x “xj−1

j−1”

” is is the the value of value of a parity a parity bit “j−1,” bit “j−1,” and and `` `` ∑i=1a ∑i=1a v(j-1) v(j-1) a+1” a+1” is is the the value value of a

f a sum

m of “a”

f “a” randomly

randomly chos chosen irre irregular gular re repe peats ats of the

f the me

message ge bits; and bits; and making the sequence making the sequence of parity

f parity bits

bits avai availa lable f ble for r tra transmi smissi ssion

n in a

a tra transmi smissi ssion

n

data stream. data stream. Court’s Analysis Court’s Analysis The claims The claims recited the formula recited the formula of

f generating

generating a parity a parity bit by bit by accumulating accumulating two values: the value two values: the value of

f the

the previous previous parity parity bit and bit and the sum the sum

f
f a

a number of number of randomly chosen irre randomly chosen irregular repeats of gular repeats of message message bits. (Pg.

bits. (Pg.

994) 994) This formula This formula was the was the determin determinative ative fe feature ature, as , as the the othe

ther

r limitations limitations in the claim in the claim we were consi re considered ered generi generic. c. The court The court held held that the that the form formula ula constituted an inventive constituted an inventive concept that concept that sufficiently sufficiently limited limited the claim’s the claim’s preemptive preemptive effect. The

effect. The

irregular repetit irregular repetition

n of
f me

message bits and ssage bits and the use the use of

f a

a prior prior parity parity bit for bit for calculating a subsequent parity calculating a subsequent parity bit bit we were re inventive inventive concepts that yielded concepts that yielded significant benefits, significant benefits, namely, namely, balancing balancing the goals of the goals of efficiency efficiency and and accuracy accuracy in error correction. in error correction. (Pg. 996) (Pg. 996) Although the Although the determinative determinative limita limitations were tions were mathematical, mathematical, they they were narrowly def were narrowly defined ned and and ti tied ed to to a a sp specific ecific error correction process. error correction process. The The limitations limitations were were also not necessary also not necessary or obvious

r obvious tools

tools for achieving for achieving error error correction, correction, and and greatly limited the sc greatly limited the scope of

pe of the claims,

the claims, leaving leaving untouched untouched many many other types

ther types of error correction.
f error correction. (Pg.

(Pg. 996) 996)

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Analysis of Specific Claims Held Patentable

Ameranth, Inc., No. SACV 11-00189 AG, 2014 WL

7012391 (C.D. Cal. Nov. 12, 2014)

claims directed towards monitoring a physical casino poker

game.

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SLIDE 24

Analysis of Specific Claims Held Patentable

Step 1: Not Abstract:
Although claim 1 contained the limitations of

“transmitting the total elapsed time to a compensation system” and “calculating an amount of compensation for the particular player based on the total elapsed time and storing the calculated compensation in at least one

f a system database or the player database” it is hard

to say that claim 1 is directed to “the abstract concept

f a customer loyalty program, and more specifically to

computer automation of a player rewards system within a poker room” when it includes key steps that are not related to the compensation system recited in the claim

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Analysis of Specific Claims Held Patentable

Claim Claim 1.

1. A computerized
mputerized method

ethod for

r monitoring

monitoring a physical hysical casino asino poker

ker game

game comprising: comprising: a.

a. rece

receivin iving a po poker ker player check ck-in input ut con contai aining ning player player identifi identification cation info information rmation and nd player player poker poker game ame type ype preference; reference; b.

b. identifying

identifying a particular particular player player in in a playe layer database atabase from rom the he player player check-in check-in input; input; c.

c. determini

determining the he seating seating av availa ailability lity fo for said aid particular articular player’s layer’s poker

ker game

me type pe preference preference from from a table able availability availability database database including including game ame types ypes in in real real time; time; d.

d. adding

dding said said particular rticular player player to a waitlist aitlist for

r said

said poker poker game type ype pre refe ference rence if no matc matching hing table table for

r said

said game game type type is is currently rrently available; available; e.

e. displaying

displaying ind indicia cia identify dentifying ng said id partic particular ular pla player on

n a public

ublic waitlist aitlist display, isplay, said aid public public display display including ncluding the the display isplay of

f inform

information ation comprising

mprising at least

east two two diffe ifferent rent poker poker ga game me types types and nd waiting waiting players layers for for each ach game type and nd where wherein said aid public ublic display isplay is is suitable suitable for for view iewing ng by by a multiplicity tiplicity of players layers or

r pr

prospect

spective

ive pla laye yers rs thr throughout ughout the the poker poker room;

om;

f.

f. selecting

selecting a table able fo for said aid particular articular waiting aiting player ayer matching matching said said wai waiting ing player’s layer’s selected selected game game type type when when it it is is available available and nd then then assigning assigning said aid player layer to that hat available vailable table; table; g. g. rece receiving iving check-out heck-out input regarding egarding said said particular particular player player containi containing ng player identification identification information; information; h.

h. identifying

identifying the he particul particular ar pl player ayer from from the the player yer check- heck-out ut input input inform nformation; tion; i.

i. removing

removing the the player layer from rom the he game game and and from rom the he table; table; j.

j. upd

updatin ting the the table le av avail ailability bility to to reflec reflect that hat a seat seat for

r the

the partic articular lar poker

ker game

me type type at said table i e is c s currently available;

k. ascertaining

ascertaining the the total

tal ela

elapsed sed time time between between rece receiving ing the he che check-in k-in inp input and nd the the check- heck-

ut
ut input

nput of

f the

the player; yer; l.

l. transmitting

transmitting the the total

tal elapsed

elapsed time time to to a compensation

mpensation system;

ystem; and and m.

m. calc

lculati ulating an amo mount of compensa

mpensation

ion for the particular articular player layer based ased on

n the

the total al elapsed elapsed ti time me and storing toring the the calcu alculated lated compe

mpens

nsation ation in at least east one

ne of a syste

system databas tabase or

r

the the player layer database. atabase.

Court’s Analysis Court’s Analysis Defendants Defendants assert that assert that the steps that coul the steps that could d be omitted be omitted while while leaving leaving intact a player intact a player rewa reward system i rd system include clude at lea least steps c, t steps c, d, d, e, and and f, which cove f, which cover d r dete termining s rmining seating ating availability, adding availability, adding players players to to waitlists, waitlists, putting player identifying putting player identifying information information on

n a

a public waitlist public waitlist displa display, y, and and as assigning gning a playe a player r to to a table a table. (Pg. 6) (Pg. 6) And And even a even assumi ssuming tha ng that those elements those elements should should be be ignored ignored in the in the first step, as first step, as to to the the second second Ali Alice/Ma e/Mayo step, yo step, a aski king ng whether there whether there is “ “signi nifica cantly ntly more” more” in the the cla claims, ms, Defendants have Defendants have not shown not shown wh why y these other these other elements elements are i e insuf suffici cient.

t. Put di

Put differently, rently,

ne could
ne could implement

implement many different many different player player re reward ward systems that do systems that do not not infringe infringe the the

claims. (Pg.
claims. (Pg. 6)

6) The q The questi estion

n in the a

the abstra stract ct idea ea context context is whether there a whether there are other wa e other ways ys to to use use the the abstract abstract idea in idea in the the same field,” which ca same field,” which can n show that show that the preemption the preemption concern concern is not is not

implicated. Thus,
implicated. Thus, Defe

Defendants have ndants have not shown how not shown how thes these claims e claims implicate implicate “the basic “the basic underlying concern underlying concern that these patents tie that these patents tie up up too much too much future use” future use” of

f the abstract idea

the abstract idea

f a
f a player

player reward system. reward system. (Pg. (Pg. 6) 6) De Defe fendants ndants argue argue that ce that certain rtain prior prior art art show

ws that

s that the abstract the abstract concept of “a concept of “a customer customer loyalty loyalty program d program dire recte cted to pok to poker playe r players rs ... ... was was practice practiced prior prior to to the the d date te of

f the

the inve invention.... ntion....” ” De Defe fend ndants ants re rely ly on multiple

n multiple combinations

combinations of re

f refe

fere rence nces to to mak make that that argume argument, nt, and and as as couche couched d by De by Defe fendants ndants, , those those combinations combinations seem more like an seem more like an

bviousness
bviousness argument under

argument under 35 U.S.C. § 35 U.S.C. § 103 th 103 than an a a patent eligibility patent eligibility analysis under analysis under 35 U.S.C. § 35 U.S.C. § 101 101

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Analysis of Specific Claims Held Patentable

Smartflash LLC v. Apple Inc., No. 6:13 cv 447-JRG-

KNM, 2015 WL 661174 (E.D. Tex. Feb. 13, 2015)

Patent claimed data storage and access systems for

paying for and downloading digital content.

Step 1: Held Abstract
The general purpose of the claimed invention was

conditioning and controlling access to data based on payment, which is a fundamental building block of the economy, especially in the digital age.

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Analysis of Specific Claims Held Patentable

Step 2 of Alice analysis

Claim Claim A A method method of contr

f controlling

lling acces access to content to content data data on a

n a data

data car carrier er, the data , the data car carrier er compr comprising ng non-volatile data non-volatile data memory memory storing

ring content

content memo memory and ry and non-vol non-volatile paramet parameter r memory memory st storing

ring

use st use stat atus dat us data an and d use rul use rules, s, the e met method

d comprisin

comprising: : receiving a receiving a data data access request access request fr from a

m a us

user er for at for at leas least t one content

ne content item of the content

item of the content data data stor

red in the

ed in the non-volatile non-volatile data data memor memory; y; reading the u ading the use e statu atus data data and and use e rules les fr from the

m the par

parameter meter memor memory that that per pertain to u ain to use e of the

f the

at leas at least one t one reques requested ted content content item; item; evalu evaluating ting the u the use e statu atus data data using ing the the use e rules les to deter to determine whether ine whether acces access to the at to the at leas least t one

ne

reques requested ted content item content item stored in

red in the

the content memory content memory is is permitted; permitted; and and dis displaying to the u laying to the user er whether whether acces access is is per permitte itted d for each for each of the at

f the at leas

least t one reques

ne requested

ted content content item s item stored in the

red in the non-volatile

non-volatile data data memory. memory. Court’s Analysis Court’s Analysis In Ultr Ultramer amercial cial II, the the cou court char t character acterized d the the li limitations mitations as as merely merely dis distri ribu buting media ting media over

ver the

the Internet ternet with with the condition the condition of viewing

f viewing an

an advert advertis isement and ement and recording events recording events in in an an activity log. activity log. In Content Extr Content Extraction, the claims action, the claims simply r mply recited cited the l e long-pract ng-practiced abst iced abstra ract ct idea of collecting idea of collecting data, recognizing data, recognizing certain certain data data, , and s and storing

ring that

that data data with already with already well-kn well-known

wn methods

methods. . The The assert sserted cl ed claims aims here here recit recite specific specific ways of ways of us using ing distinct distinct memories memories, data , data types types, and us and use e rules les that that amou amount nt to s to signif gnificantly mor icantly more than than th the underl e underlying ying abst abstract ract id

idea. Although
ea. Although in

in some me claims claims the language is the language is functional functional and s and somew mewhat hat generic, generic, the claims contain signific the claims contain significant ant limitations limitations on the

n the scope
pe of the
f the inventions

inventions. . (Pg. 8) (Pg. 8) As As in in DDR DDR Holdings Holdings, , the patents the patents her here do not s do not simply apply mply apply a a known

wn bu

busines ness pr practice actice fr from the

m the

pre pre-In Intern rnet worl rld to co comput uters s or the In Intern rnet. . “The he cl claimed so solution is is nece cessa ssaril rily ro rooted in in computer computer technology technology in in order to overcome

rder to overcome a

a problem specific problem specifically ally arising arising in in the the realm of realm of computer networks.” computer networks.” (Pg. (Pg. 8) 8) Digital Rights Digital Rights Management is Management is a a technology technology that that was was developed developed after wides after widespread us read use e of the

f the

Inter ternet.

et. Digital

Digital content content became eas became easy to to repr produ

duce

e for for anyone anyone with acces with access to to a compu a computer er. . Piracy cy

f digital content
f digital content became

became wides widespread thr ad through means h means u unknown to the

wn to the pr

pre-I e-Inter ternet et wor world.

d. The

The pa patents s cl claim methods a s and syst systems s design signed to pre prevent such such easy a sy and un unauthorize ized reproduction and reproduction and acces access while while allo allowing wing the acces the access to to be near be nearly ly ins instantaneou antaneous and the and the stor

rage

age to to be permanent. (Pg. be permanent. (Pg. 9) 9) The patents The patents als also addr addres ess the the uniq ique pr problem

blem of
f contr

controlling a u lling a user er's 's acces access to to data data that the u that the user er already already pos possesses by tracking us es by tracking use e data data and and res restrict ricting ing acces access according according to to us use rul rules.

s. This

is so sort rt of acce ccess ss co contro rol was a s also so un unkn known in in the pre pre-In Intern rnet era, even though D gh Defe fendants' ' expe pert rt

pined that
pined that the patents

the patents can be can be lik likened ned to or to order dering ng a DVD a DVD over

ver the

the telephone.

telephone. (P

(Pg.

g. 9)

9) Further, the claims Further, the claims do not ris do not risk preempting all preempting all future future inventions inventions related to related to exchanging exchanging acces access to to data data for for payment payment on the

n the Inter

ternet.

et. Instead,

ead, when when tak taken n as as or

rder

dered combinations d combinations, the , the claims claims recite specific recite specific ways ways of

f combining

combining system compon system components ents and and method method steps eps beyond the r beyond the routine ine use e

f the I
f the Inter

ternet.

et. (P

(Pg.

g. 9)

9)

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SLIDE 28

Analysis of Specific Claims Held Patentable

Messaging Gateway Solutions, LLC v. Amdocs, Inc., No.

CV 14-732-RGA, 2015 WL 1744343 (D. Del. Apr. 15, 2015)

Patent directed to enabling communication between a

wireless device and an internet server.

Step 1: Held – Abstract:
Patent claims a method that enables a device that
rdinarily cannot send a message to a different device to

do so.

Similar to a translator assisting two people who speak

different languages to communicate with each other.

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SLIDE 29

Analysis of Specific Claims Held Patentable

Step 2 of Alice analysis:

Claims Claims A method ethod

f

using sing a computer

mputer

system ystem to facilit acilitate ate two-way wo-way com communication ication betwee etween a mobile ile device evice and an Internet nternet server, erver, comprising: comprising: the the computer puter system ystem receiv eceiving ng a text message essage via via a first first communication communication path; path; the the computer

mputer system

ystem insert nserting ng at at least least a mess message age body body of

f the

the text ext message message into into an an Internet Internet Protocol Protocol (IP) (IP) message; essage; and nd the the computer puter system ystem trans ransmitt mitting ing the he IP mess message age to the Internet nternet server, server, via ia a second econd communication

mmunication path,

path, wh wherein erein the text text message message originates

riginates from

from the the mobile

bile device

evice as a short

rt

message message service service (SMS) SMS) text text mess message, age, and nd wherein erein the SMS text ext message message cont ntains ns a multidigit ultidigit addr ddress ess that is fewer ewer th than an seven seven digits digits and and that hat is associated ssociated with with a URL RL of

f the

the internet nternet server. erver. Court’s Analysis Court’s Analysis The The Court finds Court finds that that Claim 20 contains an Claim 20 contains an inventive inventive concept concept sufficient to sufficient to render it render it patent patent el eligible.

igible. Like

Like th the claims in e claims in DDR DDR Holdings, Holdings, Claim 20 “is Claim 20 “is necessarily necessarily rooted in

oted in computer technology

computer technology in in

rd
rder

r to overcome to overcome a problem specifically a problem specifically arising arising in in th the e realm of realm of computer networks.” computer networks.” Claim 20 is Claim 20 is directed directed to a problem unique to text-message to a problem unique to text-message telecommunication between telecommunication between a a mobi mobile device and le device and a computer. The a computer. The solution solution it provid it provides is teth es is tethered ered to the technology to the technology that that created the created the

problem. (Pg.
problem. (Pg. 5)

5) Wh While ile it is true it is true th that at not not all all claims claims directed directed at addressing Internet at addressing Internet issues issues are patent eligible, are patent eligible, th this is cl claim is aim is analogou analogous s to to those in those in DDR DDR Hold Holdings.

ings. It

It specifies specifies how an inte w an interaction raction between between a mobile phone a mobile phone and and a computer i a computer is mani manipulated pulated in order to

rder to achi

achieve eve a des a desired red res result lt whi which h

verrides conventional
verrides conventional practice.
practice. Conventionally,

Conventionally, phones could not phones could not send send SMS SMS text text messages to messages to co computers.

mputers. The claimed method

The claimed method manipulates that interaction manipulates that interaction by tran by translating the slating the message in message in a way a way that that allows the computer allows the computer to to receive receive an and understand the message. d understand the message. (Pg. (Pg. 5) 5) Unlike the Unlike the claims claims identified by identified by Defendants, Defendants, Claim 20 contains Claim 20 contains a a sufficient inventive sufficient inventive concept concept to render to render it it patent-eligible. It is patent-eligible. It is firmly firmly rooted in rooted in technology technology and and is is addresse addressed to to a specific a specific problem arising problem arising in in the the realm of mobile realm of mobile device-to-Inte device-to-Internet communication. rnet communication. Furthermore, Furthermore, it it contains sufficient limitations contains sufficient limitations to to prevent it from prevent it from preempting an preempting an abstract idea. abstract idea. (Pg. (Pg. 5) 5) 29

SLIDE 30

Analysis of Specific Claims Held Unpatentable

TriPlay, Inc. v. WhatsApp Inc., No. CV 13-1703-LPS,

2015 WL 1927696 (D. Del. Apr. 28, 2015) (Patent invalidated)

Patent directed to converting messages, based on

certain criteria relating to communication or display capabilities of the originating or destination devices or

n the relevant communication media.

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SLIDE 31

Analysis of Specific Claims Held Unpatentable

Step 1 of Alice analysis:
The abstract idea can be, but need not amount to a preexisting,

fundamental truth about the natural world that has always existed”, or a “method of organizing human activity (such as a longstanding commercial practice”).

Here, the claims only cover the abstract idea of converting and

forwarding messages.

Claim 12 does reference certain seemingly concrete elements, such as

the originating and destination communication devices, and the “messaging system” that acts as an intermediary and converts the messages.

Claim 1 includes an “access block” and a “media block” which could be

argued to possess a particularized form, depending on their construction.

But the mere presence of some concrete claim elements—even elements

associated with computer- or Internet-based technology—is insufficient to indicate that the claims as a whole are not directed to an abstract idea, if those elements are well overtaken in the claim by the articulation of the abstract idea itself.

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SLIDE 32

Analysis of Specific Claims Held Unpatentable

Step 2 of Alice analysis

Cla Claims ms A metho ethod of messa essage ge commu communi nica cati tion

n via

via a messa messagi ging ng system stem betwe between one ne

r
r more

more orig

rigina

inating ing commu

mmunica

nication tion dev devices ces ass ssigned ned to a sender sender and and one ne

r
r more

more destin inat ation ion communication

mmunication device

ces assigne igned to a rece ceive iver, the method method comprising: comprising: a) a) before before delive delivery ry to to the the rece eceiver, ver, obtaining

btaining by a messag

messaging ng syst system em a me message ge hav having ng in init itial characte haracteris istics cs compris comprising, ing, at at le leas ast, a message ge format format and and an initi nitial al me message ge layout; layout; b) b) selecting selecting a message message layout layout and and converting converting at at le leas ast said initial al me message ge layout layout to to said said se selected lected message message layo yout ut to to form form an an adapted adapted message essage layout layout in in accor accordance ance with th at at le leas ast

ne

ne cr crite iterion ion selecte ted from rom a group group compris comprising: ing: i) i) crit criterion ion relate ated to to me message communicat communication capab apabil ilit ities of the destinat destination ion com

mmu

municat nication

n device

device with th re regard gard to to message message commu communicat nication

n

capabilitie capabilities of

f the

the origina riginating ting communication communication device; device; ii) ii) crit criterion erion related elated to to message message displa displaying ying capabil capabilities es of

f the

the destinat estination

n

communication communication device ice with ith regard to message ge communicat communication ion cap apab abilit ilities

f
f the

the originating riginating communication communication device; device; and nd iii) iii) cri criteri erion rela elated ed to to comm communication media edia between between ori

riginati

ating and destination ination device ice; and and c) c) facilitating facilitating delivery delivery of

f the

the adapted dapted message essage to to the the receiver. eceiver. Court’s Analysis Court’s Analysis The plaintiff The plaintiff argues that argues that the ‘messages' the ‘messages' must be electronic messages must be electronic messages that that are are sent sent and d recei received by electroni ed by electronic commu communication nication devices' devices' which prevents the which prevents the claims from claims from preempting preempting all forms all forms of

f converting and

converting and forwarding forwarding messages messages that that humans have humans have done on done on paper paper fo for centuries. The r centuries. The prohibiti prohibition n against against patenting patenting abstract ideas abstract ideas cannot be circ cannot be circumvented umvented by “attempting to by “attempting to limit limit the the use of use of the i the idea ea to a to a pa parti rticula ular technological technological environment. (Pg. 13)

environment. (Pg. 13)

Second, Second, Plaintiffs Plaintiffs assert that assert that the messa the message conversion ge conversion at i at issue is accomplished ssue is accomplished by an “inte by an “interme mediary” diary” compute computer r (the (the “me “messaging ging system” re ” refe fere rence nced in the in the claim). Yet claim). Yet this this intermediary intermediary compute computer r can can simply simply be a generic computer, be a generic computer, which which is not is not sufficient to sufficient to render render th the claim e claim patent eligible. patent eligible. The The mere mere recitation of recitation of a a generic generic computer computer ca cannot transform nnot transform a patent-ineligible a patent-ineligible abstract idea abstract idea into into a patent a patent-eligible invention.” (Pg.

eligible invention.” (Pg. 15)

15) In DDR Holdings, In DDR Holdings, for for example, example, the claims the claims were were held to held to be be patent patent eligible eligible under under the the second second step of step of the the Ali Alice e test beca test because they use they involved volved a “ “soluti

lution”

n” to to a problem, a problem, and and which described which described “how “how interactions with interactions with the the Internet Internet are are manipulated manipulated to yield a de to yield a desired result” and sired result” and avoided avoided pre-emption by pre-emption by claiming claiming

nly
nly a

a “specific way” of “specific way” of performing performing the the tas task, s , such ch that “the that “the claims claims at at is issue did did not attempt not attempt to preempt to preempt every every application pplication of

f the idea. (Pg.

the idea. (Pg. 15) 15) Plaintiffs Plaintiffs do do not not ide identify any tify any such ch “s “spe pecifi cific” functionality he c” functionality here re, , and and an an examination examination of claim 12 reveals

f claim 12 reveals none.
none. Claim 12 does

Claim 12 does not purport not purport to to limit limit itself to a itself to a specific specific way way of

f converting

converting a message from a message from one

ne layout to

layout to another— another— it it simply simply covers the act covers the act of “converting”

f “converting” messages,

messages, based on certain based on certain criteria criteria relating relating to communication to communication or display

r display capabilit

capabilities of es of the the originating or

riginating or

destination ination device vices or on the

r on the re

rele levant vant communication media. (Pg. communication media. (Pg. 15) 15)

32