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Federal Circuit Affirms Delaware Alice Decision

In issuing its precedential decision earlier this month in Two-Way Media v. Comcast, the Federal Circuit affirmed a Delaware district court determination that four data streaming patents were directed to ineligible subject matter pursuant to § 101 and the Alice framework. The four related patents (U.S. Patent Nos. 5,778,187, 5,983,005, 6,434,622, and 7,266,686) describe methods and systems for streaming audio/visual data over a communications system (e.g., the Internet) and, in particular, a scalable architecture for delivering real-time information to a number of users, including a control mechanism allowing for management and administration of users intended to receive the real-time information.

Under Alice step one, the Court found that the patents claimed the abstract idea of sending and monitoring the delivery of audio/visual information. The Federal Circuit agreed with this characterization of the claims, finding that the claims used results-based functional language with no articulation of how the particular results are achieved. Two-Way Media also proposed claim constructions that it argued tied the claims to a scalable network architecture. Even after adopting Two-Way Media’s propose constructions, both the District Court and the Federal Circuit found that the constructions, at best, encompassed using generic computer components to carry out the abstract idea and still failed to indicate how the claims themselves “are directed to a scalable network architecture that itself leads to an improvement in the functioning of the system.” (emphasis added)

Analyzing Alice step two, the Federal Circuit found that the claims contained no inventive concept. While the patent specification described a system architecture as a technological innovation, the claims themselves do not recite that architecture—for example, the claims refer to a “network communications protocol” without describing the rules that comprise the protocol, and therefore claiming, the protocol. The panel explained that the claims, instead, use functional language to achieve solutions to various technical problems (e.g., network congestion and excessive server loads) without explaining how the result is achieved. The Federal Circuit further noted that the conventional ordering of steps recited in the claims provided no inventive concept in the ordered combination of the limitations. The Court thus stated that the claims as a whole lack an inventive concept.

This case underscores the importance of careful claim drafting for software-related patents. Prosecution counsel should be careful to adequately describe how particular solutions are achieved, not just recite the solutions. It is also important to keep in mind the scope of the claims themselves, i.e., the specification cannot save a claim that covers an abstract idea and/or does not include an inventive concept. The technological innovation must be in the claims expressly.

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About this Author

Michael T. Renaud, IP Litigation Attorney, Mintz Levin Law Firm
Member

Michael’s practice is focused on patent litigation and also includes licensing, patents, copyrights, trademarks or trade secrets, and other intellectual property matters. His work in patent litigation primarily involves technologies such as electromechanical systems, digital cameras, embedded microprocessors, telecommunications and network software, cellular phones, and e-commerce, among others. Michael has also advised clients in regards to patent portfolios and IP diligence, and has counseled venture capital funds on their IP assets and patent value.

Michael rejoins Mintz Levin...

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Brad Scheller, Mintz Levin Law Firm, New York, Intellectual Property and Litigation Law Attorney
Member

Brad focuses his practice on patent disputes in Federal District Courts and at the US Court of Appeals for the Federal Circuit.  With over 12 years of experience, Brad has handled disputes involving a variety of technologies, including electrical components, electronic payment and financial systems, computer software and various consumer products, including cosmetics, video game systems and personal watercraft.

Brad also has significant experience representing clients in inter partes review (IPR) and cover business method patent review proceedings before the Patent Trial and Appeal Board of the US Patent and Trademark Office.  He provides comprehensive post-grant counseling to clients, including advising on post-grant proceedings concurrent with federal district court litigation and US International Trade Commission investigations.

Brad regularly counsels individual inventors and emerging ventures on product development strategies, renders patent clearance and validity opinions and manages the preparation and prosecution of patent applications and portfolios in various high-technology and consumer products fields.

Brad is Co-Editor for and contributor to the Mintz Levin Global IP Matters blog and chairs the firm’s Post-Grant Working Group committee.

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Tiffany Knapp, Mintz Levin Law Firm, Intellectual Property Attorney
Associate

Tiffany concentrates her practice on intellectual property litigation, with an emphasis on patent cases. She uses her background in computer science and mathematics to help clients in matters at the International Trade Commission and in Federal District Courts.

Prior to joining Mintz Levin as an Associate, Tiffany was a law clerk to Clerk Joseph Stanton of the Massachusetts Appeals Court. During her last year in law school, prior to graduation, Tiffany worked as an Intern to Mintz Levin’s IP practice. She assisted with the preparation of and...

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