International Business Machines Corp. vs. Zillow Group, Inc. et al.Appeal No. 2021-2350 (Fed. Cir. 2022)
In this week’s case, the Federal Circuit affirmed a judgment under Rule 12(c) on pleadings that IBM’s U.S. Patents Nos. 9,158,789 (the ‘789 patent) and 7,187 389 (the ‘389 patent) are drawn to an ineligible subject matter patent case under 35 U.S.C § 101. from IBM was accompanied by an expert statement explaining why the patents claimed eligible subject matter. The same panel of judges – Justices Reyna, Hughes and Stoll – also considered Section 101 patentability issues last week in Weisner v. Google LLCour article is available here.
In this case, the claimed patents covered methods and systems for displaying and interacting with data on computerized maps. Specifically, the ‘789 patent claimed methods and systems for updating and synchronizing information displayed on a map and an associated list of displayed items, based on a user’s drawing of a shape on the map to select some items and deselect others. The ‘389 patent claimed methods and systems for displaying “layered” data on a map, with the order of the layers determined by attributes of non-spatial elements, such as color and shape. The district court found that the claims of both patents were directed to abstract ideas regarding the organization and display of information on maps; that their methods could be performed using transparency overlays and other materials with conventional paper cards; and that the claims contained no inventive concept beyond “applying it to a computer”. The Federal Circuit agreed.
The Court found that the ‘789 patent claimed only the “abstract steps” of “presenting a map, asking a user to select a portion of that map, and then synchronizing the map and its corresponding list to display a larger set of data. limited to user. The Court noted that it had repeatedly held that the claims “are directed to the collection of information, understanding the meaning of that collected information, and reporting the results, all over a generic computer network operating from the normal and expected manner” (In re Killian, 45 F.4th 1373, 1380 (Fed. Cir. 2022)) are directed to abstract ideas. The Court also agreed with the District Court that the claims of the ‘789 patent were “result-oriented, describing the required functions (presenting, receiving, selecting, timing), without explaining how to accomplish any of the tasks”, which supported further the conclusion that they were directed to an abstract idea. At the second stage of the admissibility test set out in Alice Corp. against CLS Bank Int’l, 573 US 208 (2014), the Court rejected IBM’s argument that the district court was bound to accept as true IBM’s factual allegations that the claims disclosed an inventive concept, noting that it was not bound to accept conclusive allegations. Instead, the Court found that the “timing” and “user-determined form” limitations cited by IBM merely described the abstract method, which was insufficient to turn it into patentable subject matter.
Similarly, the Federal Circuit found that the claims of the ‘389 patent “simply arrange and organize sets of visual information into layers and then present said layers on a generic display device. Although the claimed methods may expedite this process organization using a computer, they do not make any improvement in any computer technology.The Court compared the claimed methods to conventional organizational methods that might be employed “when looking at a particularly cluttered paper map”.The Court rejected IBM’s argument that the claims were analogous to those found patent allowable in Core Wireless Licensing SARL v LG Electronics, Inc.880 F.3d 1356 (Fed. Cir. 2018), which concerned an improved display interface for working with information displayed on small screens of mobile devices, distinguishing wireless core on the basis that the claims of the ‘389 patent were drafted more broadly and were not limited to any particular type of display or device. The Court went on to conclude that the enumeration in the claims of generic computer components to perform the abstract steps (e.g., “the logic for selecting one or more objects to be displayed in a plurality of layers”) was not ” simply not sufficient” to disclose an inventive concept under Alice second step.
Accordingly, the Federal Circuit upheld the district court’s ruling that the patents were directed to ineligible subject matter. Judge Stoll dissented in part, agreeing with the majority on the ‘789 patent and several of the claims of the ‘389 patent, but arguing that additional limitations in dependent claims 9 and 13 of the ‘389 patent , as well as the factual allegations of IBM’s complaint and expert statement, ruled out dismissal at the pleadings stage.
The review can be found here.
By Jason A. Wrubleski
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Nature Simulation Systems Inc. v. Autodesk, Inc.Appeal No. 2020-2257 (Fed. Cir. Jan. 27, 2022; reissued Oct. 17, 2022)
This week, a Federal Circuit panel reissued its January 27, 2022 opinion in Nature Simulation Systems Inc. v. Autodesk, Inc. regarding the standard of indefiniteness of the claims, following a request for a rehearing filed by the respondent Autodesk. Our report of the January 27 opinion is available here. In the January 27 notice, although patent indefiniteness is a matter of law and considered de novo, the Federal Circuit appeared to give substantial deference to the actions of the patent examiner during the prosecution. The January 27 opinion relied in part on the clarity the majority had found in the specification and prosecution history, and in part on the Patent Examiner’s analysis, stating that “[a]claims by PTO Examiners are entitled to appropriate deference”, and deeming it relevant that the claims in question “have been considered by the Examiner” to be final. The October 17 amended opinion further reversed the district court’s invalidity decision, but removed any deference to the patent examiner and instead emphasized that the required accuracy was found in the specification and history of lawsuits. The January 27 opinion contained a lengthy dissent by Justice Dyk. The amended opinion did not convince Judge Dyk, who still found nothing in the brief or the prosecution history to clarify the meaning of the wording of the claim at issue.
The full text of the republished opinion is available here.
By Tyler Hall
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