Patent claims ineligible under § 101 where the alleged unconventional aspects of the claims merely restate an abstract idea
The patentee sued for infringement of several patents claiming a “self-evolving generic index” for organizing information stored in a database. The patents taught the “self-evolving” aspect by guiding database users to enter summary comparison usage information or relative historical usage information. The accused infringer moved to dismiss for failure to state a claim, arguing that the asserted claims are directed to patent-ineligible subject matter. The district court converted the motion into a motion for summary judgment and held the patents were directed to an abstract idea and lacked an inventive concept. The court then granted the motion.
The Federal Circuit conducted a two-part analysis to determine patent eligibility under § 101, laid out in the Supreme Court’s decision in Alice Corp. v. CLS Bank International (2014). At step one, courts determine whether the claims are directed to a patent-ineligible concept, such as an abstract idea. At step two, courts determine whether the claims contain “an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.”
At step one, the Federal Circuit held that the patent claims are directed to the abstract idea of “having users consider historical usage information while inputting data.” Abstract ideas performed on a computer system are merely abstract ideas, but software can claim non-abstract improvements to computer technology. In this case, the Federal Circuit found that the asserted claims focused on the abstract idea of considering certain information while inputting data; the asserted claims did not focus on improvements to database structure or function. The Federal Circuit further held that any benefits of the claimed invention are not improvements to database functionality, but flow from performing an abstract idea in conjunction with a well-known database structure.
At step two, the Federal Circuit held that the asserted claims lacked an inventive concept because the claims only recited “conventional, routine and well understood applications in the art.” The patentee argued that the unconventional aspect of the asserted claims was that users would be enabled to “add new parameters for use in describing items” and “to maintain consistency in how different users describe items.” The Federal Circuit found that the alleged unconventional aspect merely restated an abstract idea and that narrowing or reformulating an abstract idea does not transform that idea into an inventive concept.