IP Law Daily Intellectual Ventures database, mobile interface claims ineligible under Section 101
Tuesday, March 7, 2017

Intellectual Ventures database, mobile interface claims ineligible under Section 101

Patent assertion entity Intellectual Ventures could not pursue infringement claims against insurance companies over patents related to retrieving information from a database and implementing information through an "intelligent and mobile menu-interface agent," the U.S. Court of Appeals for the Federal Circuit has held. Two of the patents-in-suit were invalid under 35 U.S.C. §101 as directed to ineligible abstract ideas. Intellectual Ventures lacked standing to sue for infringement of the third patent due to its failure to establish ownership (Intellectual Ventures I LLC v. Erie Indemnity Co., March 7, 2017, Prost, S.).

Patents-in-suit. Intellectual Ventures I and Intellectual Ventures II ("IV") sued three several insurance companies for infringing (1) U.S. Patent No. 6,519,581 B1, titled "Collection of Information Regarding a Device or a User of a Device Across a Communication Link" ("the ’581 patent"); (2) U.S. Patent No. 6,510,434 B1, titled "System and Method for Retrieving Information from a Database Using an Index of XML Tags and Metafiles" ("the’434 patent"); and (3) U.S. Patent No. 6,546,002 B1, titled "System and Method for Implementing an Intelligent and Mobile Menu-Interface Agent" ("the ’002 patent").

District court decision. The district court concluded that IV did not own the rights to the ’581 patent and granted the defendants’ motion to dismiss the claims regarding that patent for lack of standing. The district court also determined that all three patents-in-suit were ineligible for patent protection under 35 U.S.C. §101. IV appealed.

Standing. The district court determined that IV lacked standing to assert infringement claims regarding the ’581 patent because a particular assignor did not assign any rights in the pending application for the patent to IV, or the application itself. Reviewing the question de novo, the Federal Circuit decided that an assignment agreement regarding a predecessor or parent patent to the ’581 patent did not expressly include the then-pending application for the ’581 patent and did not automatically convey rights in all child patents of the earlier patent. The agreement’s reference to "goodwill" referred to the commercial exploitation of products covered by the earlier patent, and did not extend to the ’581 patent instrument itself. Therefore, the district court’s determination regarding lack of standing was affirmed.

Ineligible subject matter—’581 patent. The Federal Circuit vacated, however, the portion of the district court’s opinion holding that the ’581 patent’s claims were ineligible under Section 101 as directed to an abstract idea. Because IV lacked standing to assert infringement of that patent, the court lacked authority to address its validity under Section 101.

Ineligible subject matter—’434 patent. The ’434 patent was drawn to methods for creating a database, using tags to identify records, and searching the database. To improve efficiency and to address the prior art’s problem of false positives, the ’434 patent proposed searching a database using an index, which essentially was a guide to the records of the database. The Federal Circuit agreed with the district court that the invention was drawn to the abstract idea of "creating an index and using that index to search for and retrieve data." Organizing and accessing records through the creation of an index-searchable database was longstanding conduct that existed well before the advent of computers and the Internet, the appellate court said. Although the claims arguably called specifically for the use of XML tags, the claims were not focused on how usage of the XML tags altered the database in a way that led to an improvement in the technology of computer databases. The Federal Circuit also agreed with the district court that the claims lacked an inventive concept rendering them patent-eligible. Employing XML tags to navigate a computerized database was not enough to transform the abstract idea into a patentable invention. The remaining claim limitations recited routine computer functions. Therefore, the claims of the ’434 patent were not eligible under Section 101.

Ineligible subject matter—’002 patent. The claims of the ’002 patent related to systems and methods for accessing a user’s remotely stored data and files. In order to improve the accessibility of data stored across multiple devices, the ’002 patent disclosed a "mobile interface" that could be called up on the user’s computer or mobile device. The interface displayed pointers to user-specific resources and information stored on the user’s devices. The invention of the ’002 patent was directed to the abstract idea of "remotely accessing user specific information," the appellate court held. This was an "age-old practice," the court said. There was no inventive concept; the recited use of a mobile interface and pointers to retrieve user information evidences nothing more than a "generic computer implementation" of the abstract idea that was insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention. The district court’s determination that the ’002 patent was ineligible under Section 101 was also affirmed.

The case is Nos. 2016-1128 and 2016-1132.

Attorneys: Christian John Hurt (Nix, Patterson & Roach, LLP) for Intellectual Ventures I LLC and Intellectual Ventures II LLC. Gregory H. Lantner (Wilmer, Cutler, Pickering, Hale and Dorr, LLP) for Erie Indemnity Company, Erie Insurance Exchange, Erie Insurance Property & Casualty Company, Erie Insurance Company, Flagship City Insurance Company, and Erie Family Life Insurance Company. Vernon M. Winters (Sidley Austin LLP) for Old Republic General Insurance Group, Inc., Old Republic Insurance Company, Old Republic Title Insurance Group, Inc., and Old Republic National Title Insurance Company.

Companies: Intellectual Ventures I, LLC; Intellectual Ventures II, LLC; Erie Indemnity Company; Erie Insurance Exchange; Erie Insurance Property & Casualty Company; Erie Insurance Company; Flagship City Insurance Company; Erie Family Life Insurance Company; Old Republic General Insurance Group, Inc.; Old Republic Insurance Company; Old Republic Title Insurance Group, Inc.; Old Republic National Title Insurance Company.

MainStory: TopStory Patent FedCirNews

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