IP Law Daily Guada’s infringement claims can proceed; factual issue exists on whether claims provide ‘inventive concept’
Tuesday, September 18, 2018

Guada’s infringement claims can proceed; factual issue exists on whether claims provide ‘inventive concept’

By Nicholas Kaster, J.D.

A motion to dismiss a patent infringement action brought by Guada Technologies was denied by a federal trial court in Delaware. The court found that the patent claims, which pertain to computerized searches of hierarchically-arranged data, were drawn to an abstract idea, but that there was a factual issue as to whether the claims provided an "inventive concept," under the Supreme Court’s Alice/Mayo test (Guada Technologies LLC v. Vice Media, LLC, September 17, 2018, Andrews, R.).

Plaintiff Guada Technologies filed an action against Defendant Vice Media, alleging infringement of U.S. Patent No. 7,231,379 ("the ’379 Patent"). The patent pertains to methods for improved navigation in computerized hierarchically arranged decisional networks. In its motion to dismiss, the defendant argued that the asserted patent failed to identify patent-eligible subject matter.

Under 35 U.S.C. § 101 "whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement ... may obtain a patent ..., subject to the conditions and requirements of this title." However, under the Supreme Court’s holding in Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable. The Court in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), established a two-part test for evaluating patent eligibility under § 101. The first step is to determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, the second step requires the court to determine whether there are additional elements that transform the nature of the claims into a patent-eligible application.

Under the first prong of the Alice/Mayo test, a court must determine whether the claims at issue are directed to a patent-ineligible concept. Here, the purported invention pertains to a hierarchically arranged decisional network—an arrangement of "nodes" (numbered boxes), which are connected by "edges" (lines connecting the numbered boxes). A user makes a decision at a particular node, after which an "edge" is used to traverse from that node to an adjacent node, which corresponds to the user's decision.

The patent describes a traversal problem in prior art networks. In the prior art, if the user navigates down the wrong hierarchy of nodes, the user must either backtrack up the nodes or start over. The plaintiff alleged that the invention solves this problem by "not locking the user into movement to adjacent nodes or having to start over at the top node." Instead, the invention allows the system to "jump" laterally from one branch to another. The plaintiff argued that "jumping" is accomplished by associating each node with descriptions and matching words in user's responses with those descriptions so the system can jump to nodes that may not be directly connected to a user's current node.

The patent claims, argued the plaintiff, are directed to methods for improved navigation in a computerized hierarchically arranged decisional network that must be navigated by a user as part of the processing, and that is also constructed to accept user inputs or data for navigation. As a result, the plaintiff contended, those claims are directed to an improvement in the functioning of a computer and are not abstract.

The defendant, however, argued that the patent claims are directed to the abstract idea of "using keywords to search hierarchically-arranged data." The claims are abstract, the defendant maintained, "because a human being could perform the steps of each method claim mentally or with pen and paper."

The court sided with the defendant, holding that the patent claims are not directed to an invention that improves the functionality of a computerized network. "Keywords" do not necessarily invoke computer functionality, said the court, they merely label certain decisions in a decisional hierarchy. "Receiving an input," "identifying at least one node," and "jumping," are all steps that a person can perform mentally in navigating a decisional hierarchy, the court stated. The "implementation details" can be computerized, but the patent provides no information as to how they might improve the functionality of a computer or computerized data set, the court concluded.

Thus, the court found that all claims of the '379 patent are directed to an abstract idea.

In moving to the second prong of Alice/Mayo, the court searched for an "inventive concept" – i.e., an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

The plaintiff pointed to two claim limitations that provide an "inventive concept." The plaintiff argued that "jumping" was not "how prior art hierarchies were navigated," and thus provides an inventive concept. The plaintiff also argued that using "keywords" to "jump" from "node" to "node" provides the required inventive concept.

An inventive concept must be more than "well understood, routine, conventional activity." The defendant argued that both "jumping" and "keyword searching" were "well-known" concepts when the patent was filed in 2002. However, the defendant provided no citation demonstrating that "jumping" and "keyword searching" were then well-known, the court noted. The patent refers to the association between keywords and nodes as "an index." However, that reference does not speak to the conventionality of keywords, nodes, and jumping. Thus, the court concluded, there remains an open question as to whether the claimed "jumping" and "keywords" were "well understood, routine, conventional activities.

There exists a factual dispute as to whether the purported inventive concepts were "well-understood, routine and conventional" in 2002, said the court. Therefore, the court did not need to determine whether the patent discloses a mechanism for "jumping." Likewise, the court could not determine whether "jumping" and "keywords" provide an inventive concept.

Accordingly, since there was a factual issue as to whether the claims provide an inventive concept, the court denied the defendant’s motion to dismiss.

This case is No. 1:17-cv-01503-RGA.

Attorneys: Stamatios Stamoulis (Stamoulis & Weinblatt LLC) and David R. Bennett (Direction IP Law) for Guada Technologies LLC. Frederick L. Cottrell, III (Richards, Layton & Finger, P.A.) and Christopher T. McWhinney (Sullivan & Worcester LLP) for Vice Media, LLC.

Companies: Guada Technologies LLC; Vice Media, LLC

MainStory: TopStory Patent TechnologyInternet DelawareNews

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