Without More, Mere Automation is Abstract—Not Construing Interchangeable Terms Doesn’t Give Them the Cold Shoulder
In the latest development relating to patent eligibility of content-based identifier patents, the US Court of Appeals for the Federal Circuit affirmed decisions finding patent claims ineligible under 35 U.S.C. § 101. PersonalWeb Techs. LLC v. Google LLC, YouTube, LLC, Case No. 20-1543 (Fed. Cir. Aug. 12, 2021) (Prost, J.) (consolidating PersonalWeb Techs. LLC v. Facebook, Inc., Case No. 20-1553, and PersonalWeb Techs. LLC, Level 3 Commc’ns. LLC v. EMC Corp., VMWare, Inc., Case No. 20-1554).
PersonalWeb sued technology companies in the Eastern District of Texas in 2011 over three of its patents. The patents were directed to data-processing systems that assign each data item a substantially unique content-based identifier, generated by hash algorithm, which changes when the content changes and is used to perform data-management functions. Several defendants successfully motioned for transfer to the Northern District of California, where their companies were headquartered and/or their employees responsible for the development of the accused products were based. After claim construction in Texas, the cases were transferred and stayed pending several inter partes reviews before the US Patent Trial & Appeal Board (Board). Previous decisions before the Federal Circuit affirmed the Board’s findings that using hash-based identifiers for data management was disclosed in the prior art; that content-based identifiers in performing file-management functions, such as backing up files, were also known and that many claims of the asserted patents had other unpatentable aspects. After the stay was lifted, the California court granted the defendants’ motion for judgment on the pleadings that the remaining asserted claims were patent ineligible under 35 U.S.C. § 101. PersonalWeb appealed.
To assess patent eligibility, the Federal Circuit applied the two-step Mayo/Alice framework. Under step one (determining whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea), the Court considered the focus of the claimed advance over the prior art and found that the claims were directed to an abstract idea. PersonalWeb contended that its claims were directed to “a substantially unique, algorithm-derived, content-based identifier for all data items in a networked computer, which allows a computer within a network containing diverse computing and storage systems to locate and distribute data without knowing either the file system of any device within the network or the conventional name of any data item.” However, the Court adopted the district court’s view, which was that the patents were directed to “(1) using a content-based identifier generated from a ‘hash or message digest function,’ (2) comparing that content-based identifier against something else, [that is,] another content-based identifier or a request for data; and (3) providing access to, denying access to, or deleting data.” Given the focus in Mayo/Alice step one of “whether the claims of the asserted patents fall within the excluded category of abstract ideas,” and citing to parallel examples from precedent cases, the Court concluded that the claims were directed to the use of an algorithm-generated content-based identifier to perform the claimed data-management functions, which include controlling access to data items, retrieving and delivering copies of data items and marking copies of data items for deletion.
The Federal Circuit found that these functions were merely mental processes that “can be performed in the human mind” or “using a pencil and paper,” and that the claims’ focus were “mere automation of manual processes using generic computers.” As the Court explained, the step one inquiry looks to the claims’ “character as a whole,” rather than evaluating each claim limitation in a vacuum. In that regard, the Court found that the claims were merely a combination of the individual abstract-idea processes. PersonalWeb attempted to argue that similar to the circumstances in DDR Holdings, the claims offered a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” but the Court regarded the asserted efficiency improvements as no different as a library using content-based identifiers to purge duplicate books.
As for Mayo/Alice step two (considering the elements of each claim individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application), the Federal Circuit did not find any such transformation. PersonalWeb argued that the claims applied inventive use of cryptographic hashes in a way that was not conventional nor routine prior to the patents. However, as noted, such use of hashes had already been found to be neither novel nor nonobvious, and the Court found that using content-dependent cryptographic hashes in place of conventional names failed to supply something “more,” much less “significantly more,” than the abstract idea itself.
In a non-precedential companion opinion released the same day, the Federal Circuit affirmed the district court’s claim construction of “unauthorized or unlicensed” to mean “not compliant with a valid license,” and construed “authorization” to mean “a valid license.” In Re: PersonalWeb Techs. LLC, Case Nos. 20-1566, -1568, -1569 (Fed. Cir. Aug. 12, 2021) (Lourie, J.) In its appeal, PersonalWeb argued that the claim construction failed to give meaning to all of the words in the claim by ignoring the disjunctive “or” and reading “unauthorized” out of the claim. The Federal Circuit agreed with the district court that “unauthorized or unlicensed” should be treated as a single concept relating to the claimed purpose of controlling access to licensed content. The Court cited to the following: The patent abstract and specification, which treated these terms interchangeably; a Supreme Court of the United States ruling that “or” can be used to connect synonyms in the context of statutory construction and the Federal Circuit’s previous recognition that tenets of statutory construction can apply equally in interpreting patent claims. The Court found that the intrinsic evidence did not support any other type of “authorization” and refused to prioritize what it called unclear portions of the prosecution history from the patent family over the clarity with which “authorized” and “licensed” were used interchangeably in the written description. In light of the Court’s precedent in Phillips v AWH Corp., the Court also found that “the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.”
Practice Note: In drafting the claims and specification, take care to describe technological advancements in a manner that avoids allegations of mere automation. When reciting “[A] or [B]” in the claims, applicants should consider whether such terms are intended to be interchangeable and should use such terms throughout the specification and claims with intention.