Further to our August 22, 2016 post, on August 19, 2016, ALJ David P. Shaw issued a Final Initial Determination (“ID”) in Certain Portable Electronic Devices and Components Thereof (Inv. No. 337-TA-994) determining that the asserted claims of U.S Patent No. 6,928,433 (“the ’433 patent”) do not recite patent-eligible subject matter under 35 U.S.C. § 101.
By way of background, this investigation is based on a March 24, 2016 complaint filed by Creative Technology Ltd. of Singapore and Creative Labs, Inc. of Milpitas, California alleging violation of Section 337 in the importation into the U.S. and sale of certain portable electronic devices and components thereof that infringe one or more claims of the ’433. See our March 24, 2016 post for more details on the complaint. Additionally, the Notice of Investigation ordered, inter alia, that the ALJ hold “an early evidentiary hearing, find facts, and issue an early decision, as to whether the asserted claims of the ’433 patent recite patent-eligible subject matter under 35 U.S.C. § 101.” See our May 11, 2016 post for more details on the Notice of Investigation.
The ’433 patent is directed to “an efficient user interface for a small portable music player” that utilizes a small number of controls to navigate between songs to be played. Although ALJ Shaw determined that the phrase “portable media player” need not be construed, to provide the Commission with a thorough evaluation of Complainants’ arguments, he addressed those arguments and construed the term to mean a “portable media playback device,” as distinguished from a general-purpose handheld computer or a personal digital assistant. Claim 1 of the ’433 patent, from which asserted claims 2, 3, 5, 7, and 17-28 depend, is reproduced below.
1. A method of selecting at least one track from a plurality of tracks stored in a computer-readable medium of a portable media player configured to present sequentially a first, second, and third display screen on the display of the media player, the plurality of traces accessed according to a hierarchy, the hierarchy having a plurality of categories, subcategories, and items respectively in a first, second, and third level of the hierarchy, the method comprising:
selecting a category in the first display screen of the portable media player;
displaying the subcategories belonging to the selected category in a listing presented in the second display screen;
selecting a subcategory in the second display screen;
displaying the items belonging to the selected subcategory in a listing presented in the third display screen; and
accessing at least one track based on a selection made in one of the display screens.
Asserted claim 2, for example, includes the further limitation that the “accessing at least one track comprises selecting a subcategory in the second display screen and playing a plurality of tracks associated with the selected subcategory.”
After summarizing the parties’ arguments, ALJ Shaw walked through both prongs of the Mayo/Alice patent-eligibility inquiry. Regarding step one—whether the asserted claims are directed to an abstract idea (as opposed to a specific technological improvement)—the ALJ found that the plain language of the claims are directed to the abstract idea of using hierarchical categories to access content, and that the portable media player, storage medium, and display limitations in claim 1 are all generic components without any particularized limitations to make the claims any less abstract. These limitations were found to provide a generic environment in which to carry out the abstract idea of organizing media tracks—found akin to organizing human activity—and were insufficient to take the claims out of the realm of the abstract. Similarly, ALJ Shaw found that the asserted claims failed to address any specific problem rooted in computers, or a technological improvement to hierarchical databases/data organization, which could save the claims under step one of the Mayo/Alice test.
Regarding step two, ALJ Shaw found that the argued limitations of “accessing a track” through the hierarchy as recited in claim 1, or “playing a plurality of tracks associated with the selected subcategory” in claim 2, are no more than routine conventional activities in the art and insufficient to transform the abstract idea into a patentable application of that idea. Indeed, the ALJ found that the specification of the ’433 patent did not contain any detailed description of the technical implementation for accessing and playing a single media track or a grouping or category of media tracks. The evidence in the Background of the Invention section also confirmed that the concept of an active queue playlist was well-known in the art. ALJ Shaw concluded that “there is no indication that the inventors went beyond anything routine and ordinary in claiming the application of known organizational methods to the standard functions of portable music players and similar devices.”