On June 11, 2015, the district court for the Northern District of California granted-in-part Apple Inc.’s (defendant) motion for summary judgment finding certain claims of U.S. Patent No. 5,729,659 (the patent-in-suit) invalid under 35 U.S.C. § 101 for being directed to an abstract idea. Using the two-part Alice test, the court first determined that all seven claims challenged by defendant were directed to an abstract idea. Second, the court ruled that four of the seven claims did not contain an “inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application” and, thus, were invalid. For the remaining three claims, however, the court held that they “may” involve an inventive concept “when described and limited by the relevant language in the specification” and, thus, denied summary judgment as to those claims.
The patent-in-suit is generally directed to using “natural language based rules, associative search and tabular data structures” in order to control a computer. Specifically, input information (e.g., words spoken through a microphone) is “used to associatively search the contents of a tabular data structure organized in rows and columns” in order to determine the meaning of the spoken words and perform the requested operation. With regard to the first step of the Alice test, the court was persuaded by defendant’s argument that the challenged claims are directed to a “longstanding,” “routine” and “conventional” practice (i.e., the abstract idea of finding information in a tabular data structure). Further, the court held that “a patent is directed towards an abstract idea if it has no particular concrete and tangible form.” Accordingly, the court found the patent-in-suit to be “directed to an abstraction,” similar to Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), because “its disclosure of the use of a human voice to control a computer has no tangible or concrete form.”
In step two of the Alice test, the court held that four of the seven challenged claims were not directed to an inventive concept because they failed to do significantly more than simply describe the abstract method. Plaintiff argued that the patent-in-suit introduces the inventive concept of “using associative searching.” The court, however, was not persuaded, because the patent-in-suit does not introduce any novel hardware and it considered the patent’s definition for “associative searching” to itself be an abstract idea (i.e., “a technique of accessing or identifying an entire datum from a body of data by specifying any portion of the datum.”). Thus, the court found these four claims to “simply recite the abstract idea of finding and processing data implemented on a generic computer which is controlled by a generic word recognition device.” For the three remaining challenged claims, the court held that they “may” involve an inventive concept because they are means-plus-function limitations that are limited to the structure disclosed in the specification. Thus, the court denied summary judgment as to these three claims.
Potter Voice Technologies, LLC v. Apple Inc., 4:13-cv-01710 (N.D. Ca. June 11, 2015) (C. Wilken).