By Jody Coultas, J.D.
The U.S. Court of Appeals for the Federal Circuit has affirmed a lower court’s opinion that two patents held by patent assertion entity Intellectual Ventures I LLC (IV) were invalid as directed to invalid subject matter. The panel, in a 2-1 decision, also found a third patent to be invalid as abstract, reversing the lower court’s ruling to the contrary and an award of $8 million in damages to IV (Intellectual Ventures I LLC v. Symantec Corp., September 30, 2016, Dyk, T.).
IV asserted that Symantec and Trend Micro infringed U.S. Patent No. 6,460, 050 (the ‘050 patent), U.S. Patent No. 6,073,142 (the ‘142 patent), and U.S. Patent No. 5,987,610 (the ‘610 patent).
A Wilmington, Delaware, district court entered final judgment in favor of Symantec and Trend Micro that the asserted claims of the ’050 and ’142 patents were directed to patent-ineligible concepts under 35 U.S.C. § 101.
The court later held that Symantec was not entitled to judgment as a matter of law (JMOL) on noninfringement, invalidity, and damages after a jury found infringement of the '610 patent and no invalidity of claim 7 of the '610 patent, and awarded IV lump-sum damages of $8 million.
IV appealed the district court’s ineligibility determinations with respect to the ’050 patent and ’142 patent as to Symantec and Trend Micro, and Symantec appealed the determination of eligibility for the ’610 patent.
The ‘050 patent. The district court properly ruled that claims 9, 13, 16, 22, and 24 of the ‘050 patent were directed to the abstract idea of filtering e-mails that have unwanted content, according to the court. Receiving e-mail (and other data file) identifiers, characterizing e-mail based on the identifiers, and communicating the characterization is akin to the long-prevalent practice for people discarding letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the mail. Also, the claims used generic computers to perform generic computer functions. Therefore, the ruling was affirmed by the appellate court.
IV’s argument that the jury verdict that Symantec’s proffered prior art did not anticipate or render obvious the asserted claims of the ’050 patent was inconsistent with a determination that the claims are patent-ineligible was rejected. While the claims may not have been anticipated or obvious, that did not suggest that the idea of "determining" and "outputting" is not abstract, much less that its implementation is not routine and conventional.
The ‘142 patent. Claims 1, 7, 17, 22, 24, and 26 of the ’142 patent, which relate to systems and methods for receiving, screening, and distributing e-mail, were invalid as abstract, according to the court. The ’142 patent was directed to the conventional business practice of the screening of messages by corporate organizations in the context of electronic communications. With the exception of generic computer-implemented steps, there was nothing in the claims that foreclosed them from being performed by a human, mentally or with pen and paper. The patent discloses only generic computers performing generic functions, and did not contain an inventive concept that transformed the abstract idea into a patent-eligible concept.
The ‘610 patent. The lower court erred in holding that the ‘610 patent was valid, according to the court. The ’610 patent is directed to the use of well-known virus screening software within the telephone network or the Internet.Claim 7 involved an idea that originated in the computer era—computer virus screening. That idea was well known when the ’610 patent was filed. The specification merely recited conventional virus screening software. Virus screening is well-known and constitutes an abstract idea. The claim also merely recites generic computers that use generic virus screening technology. Recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.
Concurring opinion. Circuit Judge Mayer wrote separately to point out that (1) patents constricting the essential channels of online communication run afoul of the First Amendment; and (2) claims directed to software implemented on a generic computer are categorically not eligible for patent. "Just as the idea/expression dichotomy and the fair use defense serve to keep copyright protection from abridging free speech rights, restrictions on subject matter eligibility can be used to keep patent protection within constitutional bounds," Judge Mayer opined.
Dissenting opinion. CircuitJudge Stoll, in a dissenting opinion, argued that the judgment of the district court that claim 7 of the ’610 patent was valid should have been upheld. While the claim was directed to the abstract idea of virus screening, Judge Stoll disagreed that the claim did not contain an inventive concept that made the subject matter patent-eligible. Claim 7’s inventive concept is moving virus screening software from its typical location on end users’ computers and deploying it instead "within the telephone network" itself. Judge Stoll disagreed with the majority’s characterization of this case as fitting within the court’s line of cases rendering ineligible patents that merely perform abstract activity on the Internet.
The cases are Nos. 2015-1769, 2015-1770, and 2015-1771.
Attorneys: Eric F. Citron (Goldstein & Russell, P.C.) for Intellectual Ventures I LLC. Douglas Ethan Lumish (Latham & Watkins LLP) for Symantec Corp. Yar Roman Chaikovsky (Paul Hastings LLP) for Trend Micro Incorporated and Trend Micro, Inc. (USA).
Companies: Intellectual Ventures I LLC; Symantec Corporation; Trend Micro Incorporated
MainStory: TopStory Patent FedCirNews
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