{"id":1797,"date":"2017-11-01T21:40:52","date_gmt":"2017-11-02T01:40:52","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1797"},"modified":"2017-11-05T23:01:09","modified_gmt":"2017-11-06T04:01:09","slug":"federal-circuit-endorses-the-use-of-a-claim-preamble-which-isnt-even-a-limitation-right-to-find-the-claim-was-directed-to-an-abstract-idea","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1797","title":{"rendered":"Federal Circuit Endorses the Use of a Claim Preamble (Which Isn’t Even a Limitation, Right?) to Find the Claim Was Directed to an Abstract Idea"},"content":{"rendered":"

In Two-Way Media Ltd. v. Comcast Cable Communications, LLC<\/a>, [2016-2531, 2016-2532] (November 1, 2017), the Federal Circuit affirmed the district court’s determination that the asserted patents were directed
\nto patent ineligible subject matter under 35 U.S.C.\u00a0\u00a7 101.<\/p>\n

At issue were claims of U.S. Patent Nos. 5,778,187,\u00a0 5,983,005, 6,434,622, and 7,266,686 on a \u201cMulticasting Method\u00a0and Apparatus,\u201d and generally relate to a system for\u00a0streaming audio\/visual data over a communications\u00a0system like the internet.\u00a0 The district court denied the patent owner’s request to take judicial notice of materials from prior procedings relating to the novelty and non-obviousness of the invention, saying that the novelty and nonobviousness of the claims\u00a0under 35 U.S.C. \u00a7\u00a7 102 and 103 does not bear on whether\u00a0the claims are directed to patent-eligible subject matter\u00a0under \u00a7101.<\/p>\n

The district court found that the ‘187 and \u2019005 patents were directed to the abstract\u00a0idea of (1) sending information, (2) directing\u00a0the sent information, (3) monitoring receipt of the\u00a0sent information, and (4) accumulating records\u00a0about receipt of the sent information. The claims\u00a0are thus directed to methods of sending and monitoring\u00a0the delivery of audio\/visual information, and did not recite a saving inventive
\nconcept under Alice step two.\u00a0 The district court also determined that the \u2019622 patent\u00a0was directed to the abstract idea of monitoring the delivery\u00a0of real-time information to a user or users, and the\u00a0\u2019686 patent was directed to the abstract idea of measuring\u00a0the delivery of real-time information for commercial\u00a0purposes, and the claims contained no saving\u00a0inventive concept because although they recited some
\ncomputer components, they required only ordinary functionality
\nof these components.<\/p>\n

Regarding the \u2019187 and \u2019005 patents, the Federal Circuit said that under Alice Step I the claims are considered in\u00a0their entirety to ascertain whether their character as a\u00a0whole is directed to excluded subject matter.\u00a0 The Federal Circuit added that\u00a0claims directed to generalized steps to be performed on a computer using conventional\u00a0computer activity are not patent eligible. The Federal Circuit disagreed with\u00a0Two-Way Media argument that the district court erred\u00a0by oversimplifying the claim and ignoring claim limitations\u00a0present in its proposed constructions.\u00a0 The Federal Circuit said that the claims required\u00a0the functional results of \u201cconverting,\u201d \u201crouting,\u201d \u201ccontrolling,\u201d\u00a0\u201cmonitoring,\u201d and \u201caccumulating records,\u201d but did\u00a0not sufficiently describe how to achieve these results in a\u00a0non-abstract way. The Federal Circuit further found\u00a0Two-Way’s constructions merely\u00a0propose the use of generic\u00a0 computer components to carry out the recited abstract\u00a0idea.<\/p>\n

At Alice Step II, the\u00a0Federal Circuit considered the elements of the
\nclaim, both individually and as an ordered combination, to\u00a0assess whether the additional elements transform the\u00a0nature of the claim into a patent-eligible application of\u00a0the abstract idea.\u00a0\u00a0Merely reciting the use of a generic computer or\u00a0adding the words \u201capply it with a computer\u201d cannot\u00a0convert a patent-ineligible abstract idea into a patent eligible
\ninvention.\u00a0 To save the patent at Step II, an inventive concept\u00a0must be evident in the claims, and the Federal Circuit said that Two-Way Media could not overcome that the claim \u2014 as\u00a0opposed to something purportedly described in the specification \u2014\u00a0is missing an inventive concept.<\/p>\n

Regarding the\u00a0\u2019622 and \u2019686 patents, at Step I the Federal Circuit rejected Two-way’s argument that\u00a0the district court erred by\u00a0 oversimplifying the claims down to merely their preamble\u00a0and failing to recognize the claims solve technical problems.\u00a0 The Federal Circuit\u00a0saw no error here in the district court citing\u00a0to the preamble in its review of whether the claims are\u00a0directed to an abstract idea, citing BASCOM<\/em> and Elec. Power Grp<\/em>.\u00a0 The Federal Circuit further agreed that the claims suffered from the same infirmities as the claims of the first two patents.<\/p>\n

At Step II, the Federal Circuit agreed with the district\u00a0court that nothing in these claims requires anything other\u00a0than conventional computer and network components\u00a0operating according to their ordinary functions. The Federal Circuit further did not find any inventive concept in the ordered\u00a0combination of these steps.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, [2016-2531, 2016-2532] (November 1, 2017), the Federal Circuit affirmed the district court’s determination that the asserted patents were directed to patent ineligible subject matter under 35 U.S.C.\u00a0\u00a7 101. At issue were … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[15],"tags":[],"class_list":["post-1797","post","type-post","status-publish","format-standard","hentry","category-15"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1797","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1797"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1797\/revisions"}],"predecessor-version":[{"id":1800,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1797\/revisions\/1800"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1797"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1797"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1797"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}