Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016),Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), affirming in part and reversing in part 100 F. Supp. 3d 371 (D. Del. 2015). is a 2016 Federal Circuit decision concerning the patent eligibility of a computer-software claimed invention. In a split decision, a three-member panel of the court discussed the current legal status of such patents. The court held all three patents invalid as patent ineligible under 35 U.S.C. § 101.
Background
Intellectual Ventures I LLC ("IV"), a non-practicing entity,The Law360 blog termed IV "a ubiquitous patent troll." See Rachael Wallace, Parable Of A Patent Troll And Its Prodigal Software Patent, (Dec. 15, 2016). owned U.S. Patent Nos. 6,460,050 ("the '050 patent"), 6,073,142 ("the '142 patent"), and 5,987,610 ("the '610 patent"). IV sued Symantec Corp. and Trend Micro Inc. for infringement of various claims of the three patents by selling anti-malware and anti-spam software.
The '050 patent is directed to methods of screening emails and other data files for unwanted content such as spam. The '142 patent is directed to methods of routing e-mail messages based on specified criteria (i.e., rules). The '610 patent is directed to using computer virus screening in the telephone network. All of the patents operate by use of computer software.
Majority opinion of Federal Circuit
Judge Timothy Dyk delivered the majority opinion for the court. Judge Haldane Robert Mayer concurred, but wrote separately. Judge Kara Farnandez Stoll concurred as to two of the patents but considered the third one to be patent eligible.
The '050 patent
A representative claim of the '050 patent is claim 9, which provides:
9. A method for identifying characteristics of data files, comprising: receiving, on a processing system, file content identifiers for data files from a plurality of file content identifier generator agents, each agent provided on a source system and creating file content IDs using a mathematical algorithm, via a network; determining, on the processing system, whether each received content identifier matches a characteristic of other identifiers; and outputting, to at least one of the source systems responsive to a request from said source system, an indication of the characteristic of the data file based on said step of determining.838 F.3d at 1313.
According to IV, "this method of filtering emails is used to address the problems of spam e-mail and the use of e-mail to deliver computer viruses." The court began by applying the first step of the two-step analysis prescribed in Alice Corp. v. CLS Bank Int'l,573 U.S. 208, 134 S. Ct. 2347 (2014). and Mayo Collaborative Services v. Prometheus Labs., Inc.,566 U.S. 66 (2012). the so-called Mayo/Alice methodology, which is to determine whether the claim is based on an abstract idea. The court stated: "We agree with the district court that receiving e-mail (and other data file) identifiers, characterizing e-mail based on the identifiers, and communicating the characterization—in other words, filtering files/e-mail—is an abstract idea" because "it was [a] long-prevalent practice for people receiving paper mail to look at an envelope and discard certain letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the mail," and "[c]haracterizing e-mail based on a known list of identifiers is no less abstract." In the Alice case, the Supreme Court had held that "fundamental . . . practice[s] long prevalent" are abstract ideas.Alice, 134 S. Ct. at 2356. The Federal Circuit therefore proceeded to the second step of the Alice methodology, which is to determine whether the patent adds anything inventive to implement the abstract idea. The court held the claimed steps "routine and conventional," despite IV's argument that because the prior art did not disclose "determining . . . whether each received content identifier matches a characteristic" or "outputting . . . an indication of the characteristic of the data file," the implementation must not be routine and conventional. The court responded that the idea of "determining" and "outputting" is abstract and noninventive in computer programs, even though applying them in the context of the patent claim was not in the prior art, so that the claimed implementation was routine and conventional. The fact that the "particular prior art references do not disclose all the limitations of or render obvious the asserted claims does not resolve the question of whether the claims embody an inventive concept at the second step of [the] Mayo/Alice" analysis. This was a case in which the claimed method steps just "use generic computers to perform generic computer functions." Therefore, the claimed method is patent ineligible.838 F.3d at 1313–16.
The '142 patent
A representative claim of the '142 patent was claim 1, which provides: 1. A post office for receiving and redistributing email messages on a computer network, the post office comprising: a receipt mechanism that receives an e-mail message from a sender, the e-mail message having at least one specified recipient; a database of business rules, each business rule specifying an action for controlling the delivery of an e-mail message as a function of an attribute of the e-mail message; a rule engine coupled to receive an e-mail message from the receipt mechanism and coupled to the database to selectively apply the business rules to the e-mail message to determine from selected ones of the business rules a set of actions to be applied to the e-mail message; and a distribution mechanism coupled to receive the set of actions from the rule engine and apply at least one action thereof to the e-mail message to control delivery of the e-mail message and which in response to the rule engine applying an action of deferring delivery of the e-mail message, the distribution engine automatically combines the email message with a new distribution list specifying at least one destination post office for receiving the e-mail message for review by an administrator associated with the destination post office, and a rule history specifying the business rules that were determined to be applicable to the e-mail message by at least one rule engine, and automatically delivers the e-mail message to a first destination post office on the distribution list instead of a specified recipient of the e-mail message838 F.3d at 1316–17.
The patent describes the claimed invention as a "system . . . for automatic deferral and review of e-mail messages and other data objects in a networked computer system, by applying business rules to the messages as they are processed by post offices." The court said this was just what a brick-and-mortar post office or a mailroom does. Mailrooms "receive correspondence, keep business rules defining actions to be taken regarding correspondence based on attributes of the correspondence, apply those business rules to correspondence, and take certain actions based on the application of business rules." Those actions include "gating the message for further review, as in claim 1, and also releasing, deleting, returning, or forwarding the message, as described elsewhere" in the patent. In the language of the Alice case, this claimed system consists of using procedures that are "fundamental . . . practice[s] long prevalent in our system" and "method[s] of organizing human activity."See Alice, 134 S. Ct. at 2356. "[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper." Therefore, the "patent is directed to a conventional business practice—the screening of messages by corporate organizations—in the context of electronic communications." The patent states that claimed system operates with conventional computer equipment and conventional computer operating systems such as Windows. Thus the implementation is conventional. Here, as in the Alice case, "each step does no more than require a generic computer to perform generic computer functions."See Alice, 134 S. Ct. at 2359. Therefore, the patent is invalid under § 101.838 F.3d at 1318–19.
The '610 patent
Claim 7 was the only asserted claim of the '610 patent. Claim 7 depends from claim 1, which provides: 1. A virus screening method comprising the steps of: routing a call between a calling party and a called party of a telephone network; receiving, within the telephone network, computer data from a first party selected from the group consisting of the calling party and the called party; detecting, within the telephone network, a virus in the computer data; and in response to detecting the virus, inhibiting communication of at least a portion of the computer data from the telephone network to a second party selected from the group consisting of the calling party and the called party. Claim 7 adds to that the further limitation of "the step of determining that virus screening is to be applied to the call based upon at least one of an identification code of the calling party and an identification code of the called party."838 F.3d at 1319.
Unlike the other patents in the case, this one "involves an idea that originated in the computer era—computer virus screening." Nonetheless, "the idea of virus screening was nonetheless well known when the '610 patent was filed. Performing virus screening was a long prevalent practice in the field of computers, and, as the patent admits, performed by many computer users." The idea of the patent is thus, by itself, "well-known and constitutes an abstract idea." Turning to Mayo/Alice step two, the court found the implementation conventional. Since the patent added nothing inventive to the abstract idea, the claimed method was patent ineligible. Placing the method in the environment of a "telephone network," did not impart patent eligibility. It "merely provides a 'generic environment' in which to carry out the well-known and abstract idea of virus screening." The court stated: "For the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of 'well understood, routine, [and] conventional activities previously known to the industry.' " Therefore, claim 7 was patent ineligible.838 F.3d at 1319–20.
Concurring opinion
Judge Mayer agreed that all claims were patent ineligible, but wrote separately "to make two points: (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."
On the first point, Judge Mayer insisted:
Suppression of free speech is no less pernicious because it occurs in the digital, rather than the physical, realm. Whatever the challenges of applying the Constitution to ever-advancing technology, the basic principles of freedom of speech and the press, like the First Amendment's command, do not vary when a new and different medium for communication appears. Essential First Amendment freedoms are abridged when the Patent and Trademark Office ("PTO") is permitted to balkanize the Internet, granting patent owners the right to exact heavy taxes on widely-used conduits for online expression.838 F.3d at 1323 (citations and internal quotation marks omitted).
On the second point, Judge Mayer argued: