Interval Licensing v. AOL — Judge Plager’s Concurring Dissent

The majority of the panel in Interval Licensing v AOL, Appeal no. 2016-2502, -05, -06, -07 (Fed. Cir., July 20, 2018) affirmed the district court’s finding that claims 15-18 of U.S. Pat. No. 6,788,314 are invalid as attempting to claim and abstract idea without reciting further elements that amount to an “inventive concept,” as called for by the Alice/Mayo test. Ed.’s note: You can skip the next 11 paragraphs, which discuss the panel’s reasoning, to get to the really interesting part of the decision.

The majority of the panel Taranto and Chen (writing) did a thorough analysis of the claims directed to a computer readable medium for use by a content display system that uses an “attention manager” that makes uses of unused capacity of a display device, by displaying content in that unused capacity. Inter alia, the attention manager can use the capacity to display content in an area of the display screen not used by already-displayed content with which the user is actively engaged. Put simply, this embodiment is the display of a second set of data in an area that does not overlap with an already displayed first set of data.

The panel affirmed the district court’s holding that the claims amounted to an impermissible attempt to claim an abstract idea, and that the 9 functionally-claimed “generic sets of instructions” of the attention manager were conventional and well-known to the art.

The abstract idea was defined by the district court as “providing information to a person without interfering with the person’s primary activity.” The court then concluded that the claims lack an inventive concept for implementing the abstract idea, since the elements are “purely conventional and do no more than apply the abstract idea…in the particular technological environment of networked computers.” The court noted that “the claims do not recite how the attention manager solved the problem [stated above]” and that claim limitations directed only to a result do not recited and inventive concept.

The panel agreed, setting forth the analysis required under the Mayo/Alice test, and described an abstract idea challenge to a claim as involving an “abstract idea” step and the “inventive concept step.” The panel relied on O’Reilly v Morse, noting that the invalid claims failed to recite a practical way of applying an underlying idea and that the claims instead were drafted in such a “result oriented way that they amounted to encompassing the ‘principle in the abstract’ no matter how implemented.'”

The panel comes close to extracting a rule from precedent that a claimed invention “must embody a concrete solution to a problem having ‘the specificity required to transform a claim from one claiming only a result to one claiming a way to achieve it.'” The panel recognized that “computer software related inventions–due to their intangible nature–can be particularly difficult to assess under the abstract idea exception.” However, “software can make non-abstract improvements to computer technology” as opposed to software that uses existing computers as tools “in aid of processes focused on ‘abstract ideas.”

The panel tried to tie these two concepts together, stating that software-based claimed inventions have failed to pass s. 101 muster, because they did not recite any assertively invention technology for improving computers as tools and/or because the elements were so result-based that they amounted to patenting the patent ineligible concept itself.

Interval argued that the “attention manager” is a technological improvement to a computer system” but the panel disagreed, stating that the gist of the invention [see above] is an abstract idea, “standing alone.” The district court had “aptly observed that this ‘basic and longstanding practice can be found in, for example a television station’s use of a ‘breaking news’ ticker across the bottom of the screen” but did not note that this was a rationale based on the court’s and the panel’s belief that the claimed invention was obvious.

The panel continued, arguing that “collecting, analyzing, and displaying [intangible] information, without more, is an abstract idea…Recitation, as in this case, of the collection, organization and display of two sets of information on a generic display device is abstract absent a ‘specific improvement to the way computers [or other technology operate.'”

The panel goes on the identify the “attention manager” as a “result-centric construction”…that conforms with the specification, “which lacks any description of how a display device would ensure the segregation of two sets of information presented on a display screen.” Apart from the condemnation of result-centric constructs, the panel has now veered into the thicket of the written description requirement of s.112 (!), and continues in this vein to disregard the recited, nine “instructions” as essentially non-enabled, again without citing s. 112.

The panel veers back into abstract idea territory, that is largely repeated in the “Inventive Step” section, by noting that the “claimed [sic, recited] instructions merely recited routine and conventional steps …[that] only discuss [sic, recite] broad functions and are not directed to any technological improvement for performing these functions.” The panel found no “particular conception of how to carry out that concept [the abstract idea].” The panel cites International Ventures LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed. Cir, 2017) for the proposition that “[r]emotely accessing and retrieving user-specified information is an age-old practice that existed well before the advent of computers and the internet.” But aren’t we back in s.103 territory again?

Judge Plager penned a 17-page concurrence-in-part and dissension-in-part. He gets right to the point of his concerns:

“Today we are called upon to decide the fate of some inventor’s efforts, whether for good or ill, on the basis of criteria that provide no insight into whether the invention is good or ill. Given the current state of the law regarding what inventions are patent-eligible, and in light of our governing precedents, I concur in the carefully reasoned opinion by my colleagues in the majority, even though the state of the law is such as to give little confidence that the outcome is necessarily correct. The law, as I shall explain, renders it near impossible to know with any certainty whether the invention is or is not patent-eligible. Accordingly, I also respectfully dissent from our court’s continued application of this incoherent body of law.”

Got your attention yet? He immediately identifies the Supreme Court-created exception to patentability for abstract ideas, as “the one that causes the most trouble.” Plager sees the exceptions for laws of nature and natural phenomena as hiving “understandable referents” that render them “more amenable to analysis” citing Ariosa as a decision that does not “preclude controversy.”

This concurrence-dissent picks up steam, as Plager turns to the American Heritage Dictionary for a working definition of “abstract idea”: “An idea by itself is ‘[s]omething such as a thought or conception that is the product of mental activity.’ The definitions of ‘abstract’ include…[n]ot applied or practical; theoretical.’ An idea, whether abstract or not, is something that lives in the interstices of someone’s brain, a psychophysiological area not fully understood to this day. And ideas can have an infinite range of abstractness, if by that we imply concreteness…How do we pick the line where the articulation and explication of an idea is sufficiently concrete to be ‘non-abstract’ but not so much as to be ‘generic and conventional’?…There is no single, succinct, usable definition anywhere available [from 101 cases in the Fed. Cir. or the S. Ct.]…It cannot be done except through the use of equally abstract terms.”

I don’t enjoy typing that much or I would reproduce all 17 pages of this totally engaging essay. Plager argues that the “‘abstract ideas’ idea, cannot function as a valid rule of law” because it fails to predict how courts will decide future cases…from the viewpoint of decisional law, the ‘abstract ideas’ idea falls short in the sense of providing a trial judge with confidence that the judgment will be understood by judges who come after, since only judges who have the final say in the matter can say with finality that they know it when they see it.”

The good Judge is only getting started. He asks how, after judges find a claim, read after construing it and the written description of the invention, abstract, can read the same record and conclude that the claims have become “un-abstract.” He also finds no justification for resurrecting the undefinable and abstract concept of an “inventive concept”, 65 years after the enactment of s. 103 laid that principle of law to rest. I think that Judge Plager might have recognized the relationship between inventive concept and the discarded “flash of genius” requirement for patentability, but this is picking legal nits.

There is much more, but Judge Plager identifies Judge Linn and Judge Lourie as allies in this fight for a workable definition of abstract idea and inventive concept or, hopefully, some clarification by Congress. He closes by observing the current state of “havoc” in the law and notes that he does not fault the Fed. Cir. for trying to follow the S. Ct.’s instructions, “even when the results demonstrated that the test [for abstract idea] did not product coherent, readily understandable, replicable, and demonstrably just outcomes…The problem is [that abstract idea] does not distinguish good from ill in any coherent sense, and thus does not serve well either patent law or the public…[it] adds nothing to ensuring patent quality that the statutory requirements do not already provide.”

Judge Plager concludes by citing Giles Rich, Wittgenstein and Hans Christian Anderson: “The emperor clearly has no clothes; we need not wait for our children to tell us this.”

Hear! Hear! And Amen!

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