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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.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume VII, Number 320

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About this Author

Michael Renaud IP Litgation Attorney Mintz Levin
Member / Chair, Intellectual Property Division

Michael is a highly regarded intellectual property litigator and patent strategist who helps clients protect and generate revenue from their patent holdings. Intellectual Asset Magazine has repeatedly recognized him in its select IAM Patent 1000 and IAM Patent Strategy 300 publications. Clients rely on his counsel regarding sensitive licensing agreement negotiations, acquisitions, and other technology transactions. He leads a team known for its ability to translate complex technology and its value to non-technical professionals — in court and business negotiations.

Michael is...

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Brad Scheller Patent Litigation Attorney Mintz Law Firm
Member

Brad Scheller is a trial attorney who focuses his patent litigation practice on representing clients in the automotive devices, thermoplastics, electronic components and consumer products industries in federal district court, before the Patent Trial and Appeal Board and at the International Trade Commission. With a background in mechanical engineering and over 14 years of experience practicing law, Brad has successfully represented patent owners in enforcing their rights against infringers and protecting those rights from challenges of invalidity, and has also successfully defended and negotiated settlements for client innovators accused of infringement and unfair commercial practices.

Brad focuses his litigation practice on patent disputes in Federal District Courts, including the Eastern District of Texas, Southern District of California, District of Delaware, Northern District of California and the Eastern District of New York, as well as at the International Trade Commission. Brad has handled disputes involving a variety of technologies, including electric motors, thermoplastics, electrical components, electronic payment and financial systems, computer software and various consumer products, including cosmetics, video game systems and personal watercraft.

Brad also has extensive experience in inter partes review (IPR) and covered business method patent review proceedings before the Patent Trial and Appeal Board and repeatedly defends and successfully preserves the rights of patent owners before this tribunal. He is well-versed in the particularities of post-grant proceedings from both the petitioner and patent owner perspective and provides comprehensive post-grant counseling to clients, including advising on post-grant proceedings concurrent with federal district court litigation and International Trade Commission investigations. As a registered patent attorney, Brad enjoys representing his clients in patent office proceedings on a variety of technologies.

Brad also 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 Global IP Matters blog and co-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 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’s IP practice. She assisted with the preparation of and research for...

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