Computer software patents have been receiving significant upset overturn in validity since the well-known U.S. Supreme Court decision providing certain exceptions to patent eligible subject matter under 35 U.S.C. § 101, Alice Corp. v. CLS Bank International came out Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014). Since Alice, the Federal Circuit and other courts have been following the Alice decision and struck many presumably-valid U.S. patents as invalid without providing breakthroughs of how to overcome the 35 U.S.C. § 101 rejections to patent law practitioners.
On September 29, 2015, the Eastern District of Texas denied a summary judgment motion by Google Inc. and YouTube LLC to invalidate SimpleAir, Inc.’s two patents, Patent Nos. 8,572.279 and 8,601,154 by finding that the two patents are not directed toward an abstract idea (SimpleAir, Inc. v. Google Inc. et al.). The two patents cover systems and methods for transmitting data to remote computing devices through a “central broadcast server.” In this case, the District Court applied the two-prong Alice test including “ineligible concept” step and “inventive concept” step and found that the first “ineligible concept” test is satisfied. The Court stated that Google summarized the patents as “packaging and transmission information” and “do not explain how such a characterization, which ignores significant claim limitations, encompasses the invention claimed” by SimpleAir. Even though the Court did not disagree about the patents suggesting “implementation of the abstract idea of ‘packaging and transmitting information’” at some level, the Court’s role is not to “reach into a patent and extract an abstract idea,” rather to “examine” the patents and “determine whether they are directed to an abstract idea.” In this respect, the District Court has put forth a ruling that would appear to support the concept that transitory signals may, in fact, be patent eligible — an area long-held by Examiner to be off-limits.
Another interesting aspect of this decision is that the Court did find “a central broadcast server,” “a data channel,” and “transmitting information whether the user was online or not online to a data channel to an information source” are sufficient to show “significantly more than a patent on that abstract idea [of transitory signals]” to satisfy the Alice “inventive concept” step by heavily construing a “wherein-clause” in the claim language. Further, the Court did not buy an argument by Google that “data-transmission steps can be carried out using standard prior art protocols, carriers, and networks’ and claimed invention [was] ‘well-understood, routine, and purely conventional’” as the Court is asked to determine “whether the function performed by the computer at each step of the process is ‘[p]urely conventional.”