By Peter Reap, J.D., LL.M.
In parallel lawsuits that Technology Development and Licensing brought against Comcast, Dish Network, and Echostar, two claims of U.S. Patent RE 35,952 (titled "Television Receiver Having Memory Control for Tune-By-Label Feature") were drawn to an abstract idea that lacked an inventive concept, the federal district court in Chicago has decided. Motions for judgment on the pleadings, filed by Comcast, Dish Network, and Echostar, were therefore granted (Technology Development and Licensing, LLC v. Comcast Corporation, June 19, 2017, Bucklo, E.).
Before the court were the defendants’ motions for judgment on the pleadings, which argued that Claims 1 and 2 of the patent are directed to patent-ineligible subject matter under 35 U.S.C. §101. The Supreme Court established a two-part framework for determining whether patent claims are drawn to patent-eligible subject matter, the court noted. First, the court must determine whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea. If so, the court must determine whether the claim elements, individually or in combination, contain an inventive concept that transforms the nature of the claim into a patent-eligible application.
Abstract idea. The defendants asserted that the essence of these claims is the abstract idea of a "conversion chart," i.e., a map or guide that directs TV viewers accustomed to accessing networks (NBC, for example) or programs ("Law and Order: Criminal Intent") on certain over-the-air channels to the potentially different channels on which these networks or programs are broadcast by cable or satellite providers.
Dish and Echostar argued that Claims 1 and 2 recite the use of generic computing and television equipment to implement the abstract idea of "mapping the correspondence" between one channel and another, while Comcast argued that the focus of these claims is to "implement electronically what was previously done with a paper ‘conversion chart’" of the kind published in TV Guide, for example.
Technology Development and Licensing (TDL) disputed these characterizations of the invention and faulted the defendants for citing "no evidence other than the conversion chart described in the ‘952 Patent" to support their argument that Claims 1 and 2 are directed to an abstract idea. The court shared the view expressed by other courts that, absent any suggestion of a factual dispute on which the legal question of subject-matter eligibility turns, the defendants did not need to come forward with clear and convincing evidence to prevail on their §101 challenge.
The fact that the patent disparages conversion charts meant that TDL’s claims were drawn to something other than a conversion chart—specifically, a "television control system"— TDL argued. TDL insisted that the claims "represent a new structure" that improves previously known television control systems. This new structure comprised "three new things: channel select designations; the use of two controls, each issuing a different signal; and transmission of the first control signal via the multi-channel signal, with one control at the origin of the signal."
In TDL’s view, Claims 1 and 2 do not describe a conversion chart because the "channel select designation" is not a channel—it is a signal used to pick a channel. But the court saw no principled basis for concluding that the abstract idea of a conversion chart was limited to a system that maps channel-to-channel conversions, and excludes systems like the one recited in Claim 1, which maps channel-select designations to corresponding channel-tuning designations. At bottom, each channel-select designation ultimately corresponds to a particular signal to which the system’s "tuner means" can tune to receive programming. This correspondence describes the essence of a conversion chart, regardless of how the channel selection designations are labeled, the court determined.
According to the court, the operator’s ability to assign a label corresponding to the name of a program that airs on a particular channel, rather than to the channel name or number, did not change the essence of Claims 1 and 2. In short, Claims 1 and 2 are drawn to an abstract idea. The court thus proceeded to the second step of the inquiry.
Inventive concept. TDL suggested that Claims 1 and 2 add an inventive concept because pencil-and-paper conversion charts cannot "transmit a control signal including a data set on a channel of a multichannel signal transmitted from far away." That was plainly true, the court observed, but features and advantages that flow naturally from the use of computers to perform functions previously performed manually do not establish the existence of an inventive concept.
TDL cited McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016) for the proposition that "[i]mprovements to computers—either hardware or software—can be non-abstract." That observation was correct, but it did not establish the subject matter eligibility of Claims 1 and 2 because the ‘952 patent neither discloses nor claims an "improvement to computers," according to the court. Instead, it describes a telephone control system that uses conventional technologies performing their well-known and expected functions. Moreover, the factors supporting the court’s decision in McRO simply were not present in this case, the court noted.
TDL argued that the "spatial separation" of the two controls adds an inventive concept, citing Finjan, Inc. v. Blue Coat Sys., LLC, No. 15-cv-03295-BLS (N.D. Cal. 2016). But the patent at issue in Finjan claimed improvements in the technology available for protecting devices and networks from malicious intrusions, which were achieved, in part, by "mov[ing] malware profiling from its traditional location on end-user computers to an intermediate location on the network." The problems the ‘952 patent purports to solve had nothing to do with the location of the claimed control units, according to the court. As the specification explained, cable providers have long assigned channel identifiers remotely from viewers’ TV receivers. That was neither novel nor inventive.
Finally, TDL identified the requirement that "the control signal travel over the multi-channel signal" as "something new," but it articulated no argument to explain how this features adds an inventive concept. Nor did the patent itself suggest an answer.
The case is No. 1:09-cv-00430.
Attorneys: Joseph Nevi Hosteny, III (Joseph Hosteny LLC) for Technology Development and Licensing, LLC. Charles S. Barquist (Morrison & Foerster LLP) and Marcus D. Fruchter (Honigman Miller Schwartz and Cohn LLP) for Dish Network Corp. and Echostar Corp.
Companies: Dish Network Corp.; Echostar Corp.; Technology Development and Licensing, LLC
MainStory: TopStory Patent IllinoisNews
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