Computer elements and components that are merely restated as individual abstract functions rather than being transformed into an inventive concept are not patent-eligible
The patentees sued the alleged infringers, asserting that its products infringed three patents-in-suit. In response to the suit, the alleged infringer countered with antitrust claims against the patentees, and moved for summary judgment arguing that two patents covering the editing of XML data were invalid. The district court invalidated these two XML data patents, and barred the patentees from proceeding on its infringement claims related to the third patent-in-suit under the theory of collateral estoppel. The latter decision was based on the fact that the patent had been found invalid in a partial summary judgment order in a related proceeding pending in a different district court. The district court certified its judgment under Federal Rule of Civil Procedure 54(b).
On appeal, the patentees asserted that the district court abused its discretion by certifying the appeal under Rule 54 without a sufficiently detailed analysis. They also appealed the collateral estoppel determination from pursuing infringement claims as to the third patent-in-suit and the district court’s invalidity determination of the XML data patents. The Federal Circuit disagreed with the patentees, and subsequently, affirmed the district court’s decision.
The Federal Circuit found that despite the district court not setting forth a lengthy analysis in support of its Rule 54 certification, the certification decision met the applicable standard because the district court expressly determined that there was no just reason for delay. Additionally, the Federal Circuit found that the alleged infringer’s antitrust counterclaims only had a tenuous relationship with the claims on appeal. The Federal Circuit also affirmed the district court’s preclusion of infringement claims for collateral estoppel, determining that a partial summary judgment of invalidity was sufficient to preclude the patentee from asserting the patent in a parallel case that had reached a stage where the district court could see no good reason for permitting it to be litigated again. In addressing the patents covering the editing of XML data, the Federal Circuit found that the claims were directed to the abstract idea of collecting, displaying, and manipulating data which were already well known and used in routine business transactions. Furthermore, the Federal Circuit explained that despite the patentees’ argument to the contrary, the patent claims recited generic computer elements and components that merely restated their individual functions rather than transforming those functions into an inventive concept. Additionally, the Federal Circuit found that the patent claims provide no steps undertaken to overcome the stated incompatibility problems with XML data.