On November 16, 2016, the Federal Circuit affirmed a finding of summary judgment by the U.S. District Court of Oregon that all claims of two patents owned by Tranxition Inc. are invalid under 35 U.S.C. § 101.
Tranxition is a Portland-based company that develops software for migrating personal data and settings from one computer system to another. In 2012, Tranxition filed suit against Lenovo alleging that Lenovo’s “System Migration Assistant” infringed two patents (U.S. Patent Nos. 6,728,877 and 7,346,766). Last summer, Judge Hernandez granted Lenovo’s motion for summary judgment of invaldity, finding that the claims of the patents were directed to patent-ineligible “abstract” ideas. The Federal Circuit affirmed.
Under Alice Corp. v. CLS Bank, the first part of the test for determining patent eligibility is to determine whether the claims are directed to a patent-ineligible concept. If the answer is yes, you then look to see whether the claims contain “an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.”
Here, the Federal Circuit found that since “manual migration” is an abstract idea, so too is “automated migration.”
According to the specification, the patent is directed to solving problems arising out “migration,” which was performed manually. To solve these problems, the patent proposes “automatic transitioning of configuration settings” as a solution, and explains “[i]t is . . . desirable to provide an automatic migration of configuration settings from an old computing system to a new computing system.” Put another way, the stated aim of the patent is to automate the migration of data between two computers. This is not sufficient under step one of Alice. Contrary to Tranxition’s argument, the claim is not directed to an improvement to computer functionality. There is nothing in the claim to suggest that, once settings have been transitioned, the target computer will be any more efficient. The claim merely “transitions” data from one computer to another and thus automate the migration process. (Slip Op. pp. 6-7) (citations omitted).
Since the claims were found to be directed to abstract ideas, in order to survive the Alice test, the claims must contain “an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.” The Federal Circuit again agreed with the district court that it did not.
Here, the claim instructs a practitioner to (1) provide configuration information, (2) generate an extraction plan, (3) extract the configuration settings, (4) generate a transition plan, and (5) transition those settings to a new computer. These steps, both individually, and as an ordered combination, do not disclose an inventive concept. They merely describe a generic computer implementation, using “routine, conventional activities,” of the abstract idea, “which is insufficient to transform the patentineligible abstract idea into patent-eligible subject matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). (Slip Op. p. 8).