Uncertainty continues over whether a computer-implemented invention is patentable subject matter. The Supreme Court’s Alice test for patent eligibility under 35 U.S.C. § 101 of such inventions asks whether a patent claims an abstract idea and if so, does the claim add “significantly more” than the abstract idea itself. District courts struggle to apply this test, especially when asked to do so under a motion to dismiss the law suit at the pleadings stage of a patent litigation. A court may rightly decide that it does not need discovery, and grant the motion to dismiss because the patent fails the Alice test. But in other situations the court may not feel sufficiently informed as to whether the patent meets eligibility requirements. In these cases a motion to dismiss the law suit is more appropriately denied as premature. But what standard might be available for courts to decide between these choices – rule on patentability or dismiss as premature? The District of Delaware court may have an answer.
In three separate opinions issued on the same day in Improved Search v. AOL, Intellectual Ventures v. Ricoh Americas Corp. and Network Congestion Sol’n LLC v. U.S. Cellular Corp., Judge Robinson of the District of Delaware employed a framework for applying the Alice test at the pleadings stage. Drawing heavily from the Federal Circuit’s application of the Alice test in DDR Holdings, LLC v. Hotels.com et al., which the Delaware court considered a “benchmark” for patent eligibility of computer-implemented inventions, the court expressed the Alice test as follows:
The claims … must describe a problem and solution rooted in computer technology, and the solution must be (1) specific enough to preclude the risk of preemption and (2) innovative enough to ‘override the routine and conventional’ use of the computer.
This form of the Alice test is essentially the same as how the Federal Circuit characterized it in DDR. But, significantly, the Delaware court went a step further to identify the parts of this test amenable to resolution at the pleadings stage – i.e., before discovery formally begins.
The court found it appropriate to address only the first requirement – whether there is a risk of preemption; that is, does the patent attempt to monopolize an abstract idea, or only a specific application of it, which is permissible as a patent right. The second requirement, which asks whether the computer technology at issue was sufficiently innovative at the time of the invention, is more appropriately addressed after discovery takes place, because this inquiry “may well involve questions of fact relating to the state of the art in the technological environment involved.” Thus, at least for the variety of patent claims addressed in each of Improved Search, Intellectual Ventures and Network Congestion Sol’n, the Delaware court found that if the patent claim describes a problem and solution rooted in computer technology, and there is no risk of preemption, a motion to dismiss under 35 U.S.C. § 101 should be denied as premature.
A summary of each case follows:
- The patent at issue in Improved Search claimed a method for generating advertising cues based on a multilingual search of internet pages. The steps in the method were, essentially, to conduct a dialectal standardization of words input to a search query, conduct the search across multiple languages based on the standardized word forms, then use the returned content to generate advertising cues (e.g., a search is requested for content related to “lorry,” convert to the dialectal standardized word form, then conduct a search for both “lorry” and the English equivalent – “truck”). The pertinent limitations from the claims – extracting words from an internet search, performing a dialectal standardization of the words, and translation – were found to be sufficiently specific to “how interactions with the Internet are manipulated to yield a desired result.” The claims therefore described a problem and solution rooted in computer technology and there was no risk of preemption. The motion to dismiss under Section 101 was denied.
- The patent in Intellectual Ventures claimed a method for image scanning. The issue here was whether the claims were patent-eligible because performance of the method was based on the application of a mathematical formula. Again relying on the DDR template, the court found that although the claims did involve use of a mathematical formula, the steps evoked were limited to a specific application; using the mathematical formula to drive a motor, and output and store an image signal. The motion to dismiss was again denied as premature because the first requirement for patentability under DDR had been satisfied – the claim was not attempting to foreclose all future applications of the mathematical formula. Whether this claim ultimately satisfies the Alice test, that is, whether the second requirement is also met, remains to be seen.
- The patent in Network Congestion Sol’n was directed to a method for alleviating network congestion in a communication network. The defendants argued that the method was not patent-eligible because the claims were analogous to resource management tasks performed by humans, or because the steps could be mentally performed by someone monitoring network traffic. The court, not persuaded that the claims were familiar to business practices “from the pre-internet world,” instead found they were “more analogous to those in DDR and ‘necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.’” And in response to Defendants’ further arguments that the claimed technology was well-known, the court noted that the requisite degree of specificity was in the claims (no preemption concerns) and, based on this record, declined to dismiss for lack of patent-eligible subject matter.
The approach adopted by the District of Delaware may not work so well with every type of computer-implemented invention imaginable, and indeed its applicability will depend on whether the Federal Circuit panel’s views on how to apply the Alice test, as set forth in DDR, are broadly adopted by other members of the appellate court (at present, this is an open question). That said, the Delaware court’s approach has a common-sense appeal because, on the one hand, it gives a court the ability to decide a case early on, so as to weed out “bad” patents that should not require lengthy adjudication under Section 101. On the other hand, the innovation (second) requirement of the Alice test, which assumes a requisite degree of knowledge of what was considered “routine and conventional” at the time of invention, should rightly be approached with more caution at the pleadings stage of litigation. If a patent claim does not raise concerns of preemption and the claim is tied to solving a problem rooted in computer technology, chances are compliance with the innovation prong of the Alice test cannot be decided prior to some fact discovery. The patent claim may well still fail the Alice test, but the issue should not often be amenable to a decision on the pleadings.