In a case refining the analysis for subject matter eligibility under 35 USC § 101, the US Court of Appeals for the Federal Circuit explained that an unconventional feature that restates what has been identified as abstract is not sufficient to satisfy the second step of the Alice/Mayo eligibility analysis. BSG Tech LLC. v. BuySeasons, Inc., Case No. 17-1980 (Fed. Cir. Aug. 15, 2018) (Hughes, J).
BSG Tech sued BuySeasons for infringement of several patents related to systems and methods for indexing information stored in wide access databases. BuySeasons sought dismissal, arguing that none of the asserted patent claims were patent eligible under § 101. After the district court held all asserted claims invalid as ineligible under § 101, BSG appealed.
The Federal Circuit agreed with the district court that the asserted claims, characterized by BSG as relating to self-evolving databases, were “directed to the abstract idea of considering historical usage information while inputting data” and were patent ineligible.
In applying the first step of the two-part Alice/Mayo analysis (i.e., determining whether the claims are directed to an otherwise patent-ineligible concept), the Federal Circuit noted that the specification of the asserted patent explained that database structures that allow users to input item data as a series of parameters and values, as recited in the claims, were commonly used at the time of the invention. The analysis therefore focused on whether the claimed method was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of” wide access databases, such as that found to be patent eligible in DDR Holdings v. Hotels.com (IP Update, Vol. 18, No. 1).
The Federal Circuit found BSG’s argument that “the claimed invention improves the quality of information added to the database and organization of information in the database” unpersuasive, because the argued benefits did not improve database functionality, but instead merely “flow[ed] from performing an abstract idea in conjunction with a well-known database structure,” adding that “we have consistently held . . . that claims are not saved from abstraction merely because they recite components more specific than a generic computer.” Regarding a limitation that requires users to consider “summary comparison usage information” rather than any type of historical usage information, the Court found nothing that constituted an improvement in database functionality that could save the claims from being abstract: “a claim is not patent eligible merely because it applies an abstract idea in a narrow way.”
In considering the second step of the Alice/Mayo analysis (i.e., whether the claim requires significantly more than the abstract idea identified in step one), the Federal Circuit found no claimed improvement in database functionality. BSG argued that that the claimed invention improved the quality of information added to the database and the organization of information in the database by guiding selection of classifications, parameters and values through displays of summary comparison usage information. The Court found that these were not improvements to database functionality but only benefits that flowed from performing an abstract idea in conjunction with a well-known database structure. “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”
Practice Note: When drafting claims directed to database structures, practitioners should attempt to show that the structures improve database functionality and/or machine efficiency.