On July 9, a judge in the district of Oregon granted two motions for summary judgment finding that the claims of United States Patent Nos. 7,346,766 and 6,728,877 fail to state an inventive concept sufficient to satisfy the Supreme Court’s test for patentability of an abstract idea under Section 101, and are therefore invalid. The patents-in-suit involve technology related to the migration of user configuration settings from a source computing system to a target computing system. In granting defendant’s motions for summary judgment, the court followed the Supreme Court’s guidance in the landmark Alice Corp. Pty. Ltd. v. CLS Bank, Int’l, 134 S. Ct. 2347 (2014) decision.
Under step one of the two-step Alice test, the court first determined whether the patents-in-suit were directed toward an abstract idea. Here, the court found that plaintiff’s patents were aimed an abstract idea stating, “[plaintiff’s] claimed invention is directed at a practice that was well-known, conventional, and routine at the time of the invention, and is therefore not directed to patent-eligible subject matter.” After finding that the patents-in-suit were both directed at abstract ideas, the court then examined step two of Alice – whether the elements of each claim, either individually or as an ordered combination, state an “inventive concept” sufficient to transform the patent-ineligible abstract idea into a patent-eligible application of that idea. Here, the court found that plaintiff was attempting to manufacture an inventive concept by arguing that the source and target computing systems are “special purpose” computers programmed by its software. Specifically, the court noted that “[t]here is nothing unique, innovative, or ‘special’ about these computing systems. The ‘source’ is the computer from which settings are taken, and the ‘target’ is the computer to which those settings are applied. The systems themselves are passive in the process; they do not serve any particular purpose, much less a special one. The ‘source’ and ‘target’ systems are generic computers to which the abstract idea of migrating settings is applied, and that is not a patentable concept.”
The court also expressed concerns over the broad scope of the patents finding that “[a] patent over [plaintiff’s] claimed process risks preempting the abstract idea of migrating settings from one computer to the other. The methods and processes described in [plaintiff’s] patents are extraordinarily rudimentary and are stated at such a high level of generality that they threaten to foreclose any attempt to migrate settings between computers.”
Tranxition Inc., v. Lenovo (United States) Inc., No. 3:12-cv-01065-HZ (D. Or. July 9, 2015) (Hernandez, J).