In a recent post, I discussed a September Federal Circuit decision (Cooperative Entertainment v. Kollective Technology) that reversed a lower court dismissal of a patent infringement case on Section 101 eligibility grounds under the Supreme Court’s 2014 Alice Corp. v. CLS Bank test. Just weeks after that ruling, the Federal Circuit in IBM v. Zillow ruled on another appeal from a dismissal on eligibility grounds in a case also involving IT patents. This time, however, the Court affirmed the dismissal. Can these decisions be reconciled? In this blog, I will dissect the majority opinion and address the dissent which, relying on Cooperative Entertainment,would have allowed some of the disputed claims to survive dismissal.
In the end, I conclude that the Federal Circuit had valid grounds for affirming dismissal in this latest decision given the breadth of the claim language as compared to the prior art. And despite affirming the dismissal in this case, some of the lessons from Cooperative Entertainment have been reinforced and should continue to guide litigants.
The IBM v. Zillow Ruling
This case originated from the Western District of Washington and, like the Cooperative Entertainment case, which originated from the Northern District of California, the Federal Circuit followed regional circuit law (i.e., the Ninth Circuit) for its standard of review. As such, the Federal Circuit again reviewed this dismissal on a de novo basis, taking the well-pleaded allegations of the complaint as true.
One of the patents at issue here (U.S. Patent No. 9,158,789) represents a “coordinated geospatial, list-based and filter-based selection” method which, as the Federal Circuit described, allows a user to “draw a shape on a map to select that area of the map, and the claimed system then filters and displays data limited to that area of the map.” The other patent, U.S. Patent No. 7,187,389, represents a “system and method for simultaneous display of multiple object categories” and “describes methods of displaying layered data on a spatially oriented display (like a map), based on nonspatial display attributes (like visual characteristics—color hues, line patterns, shapes, etc.).”
Like in Cooperative Entertainment, the Federal Circuit reviewed the district court ruling through the lens of the two-step test articulated in Alice Corp.
Addressing Alice step one, the Federal Circuit found that both patents failed this test. With regard to the ’789 patent, the court relied on precedent finding that simply improving a user’s experience while using a computer application is not, without more, sufficient to render claims patent eligible. The court rejected IBM’s argument that the patent improves users’ ability to identify and analyze relevant data in large data sets, because this, by itself, does not transform the otherwise-abstract processes of information collection and analysis. The ’389 patent similarly failed to meet the step one standard as it is “directed to the abstract idea of organizing and displaying visual information.” As discussed in a prior decision, where a patent’s claims “do not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem,” they are considered abstract. Indeed, the court cited the fact that the ’389 patent is not even limited to computer screens and is essentially what has long been done by cartographers creating paper maps.
With respect to Alice step two, the court’s analysis proceeded as it did in Collective Entertainment, namely, considering whether the “claims disclose ‘additional features…that constitute an inventive concept’ and that are ‘more than well-understood, routine, conventional activity.’” The Federal Circuit agreed with the district court’s assessment that the ’789 patent did nothing more than restate the “abstract goals of the invention” and did “not teach how the input is received or the map and list displays are synchronized” and that the patent “requires nothing more than generic computer technology.” The Federal Circuit also found that the “user determined shape” limitation was not an advancement, as this was already taught in prior art. Likewise, with regard to the ’389 patent, the majority agreed with the lower court that it was merely “directed to the abstract idea of organizing and displaying visual information” and did “not recite an improvement in any computing technology.”
In comparison to a 2018 decision (Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356) relied upon by IBM — where the Federal Circuit allowed claims to pass the pleading stage — the claims at issue in this case were much broader. In Core Wireless, the claims were limited to navigating applications on small screens, whereas in IBM v. Zillow, the ’389 patent was not limited to computer screens or any particular device. In fact, as the Federal Circuit reasoned, the patent’s solution with regard to presenting visual information in a way that aids the user in distinguishing between various displayed layers could even be done using colored pencils and translucent paper. In other words, the claims described in the IBM patents did not represent a specific improvement in visual display computing technology.
There was a dissent-in-part with respect to Claims 9 and 13 of the ’789 patent, which cited Cooperative Entertainment for the proposition that “[p]atent eligibility may be resolved at the Rule 12 stage only if there are no plausible factual disputes after drawing all reasonable inferences from the intrinsic and Rule 12 record in favor of the non-movant.” The dissenting judge determined that the factual allegations, which included an expert declaration, “recite[d] the same alleged technical improvement to the graphical user interface recited in the independent claims…” but added a “re-layering and re-matching system.” The expert provided specific factual details relating to how these additional claim limitations “allow users to dynamically manipulate the visualization.” Noting that inventions directed to improvements to a graphical user interface (GUI) were found patent eligible in Core Wireless, the dissenting judge found claims 9 and 13 patent eligible because they included an improvement over the prior art based on how the user interacts with the graphical interface to view the data in a comprehensible way.
Reconciling IBM v. Zillow with Cooperative Entertainment
Although the majority opinion did not attempt to reconcile its decision with Cooperative Entertainment, the reasoning it used in distinguishing Core Wireless shows how the IBM v. Zillow decision is consistent with the Cooperative Entertainment decision. The overriding focus in all three decisions is how broad the claims reach, and whether they attempt to patent otherwise generic technology as opposed to representing an advancement in the field.
In Cooperative Entertainment, while the patents involved abstract claims in the realm of P2P computing technology, the allegations sufficiently demonstrated an advancement of utilizing different methods of handling digital content to achieve a specific objective, namely, solving capacity problems related to content sharing. In IBM v. Zillow, by contrast, the court found the claims did not go beyond generically describing a way to organize and display map information in a computer system as for non-computerized methods of overlaying map data.
As I concluded in my prior post, the Federal Circuit’s decision in Collective Entertainment should give some comfort to plaintiffs as district courts may, in the future, be more hesitant to dismiss a case at the pleading stage on ineligibility grounds in view of that decision. Despite the court’s recent affirmance of a Rule 12 dismissal, the guidance in Collective Entertainment should still be heeded by plaintiffs.
In IBM, the Federal Circuit accepted as true the allegations in the complaint and the allegations did appear to be specific and attempted to address eligibility concerns. Thus, plaintiffs should continue to pay heed to plead eligibility with the requisite specificity.
However, even when a complaint is plead with the requisite specificity, the Federal Circuit will probe whether the patent claims represent an inventive leap under the Alice test. Particularly in the computing technology area where patents are sought on abstract concepts like organizing and viewing data, courts will continue to rigorously analyze claims through the lens of this test.