The Federal Circuit recently decided two related cases concerning media content delivery patents1 owned by Affinity Labs of Texas, LLC. In both cases, the Federal Circuit held that the patents do not cover patent-eligible subject matter under 35 U.S.C. § 101.
Affinity Labs of Texas, LLC v. DirecTV, LLC, Case Nos. 2015-1845, 2015-1845, 2015-1847, 2015-1848 (Fed. Cir. Sept. 23, 2016).
The claims at issue in this appeal are directed to a system and method for providing broadcast content to an electronic device. Under step one of the Mayo/Alice framework, the Federal Circuit held that the concept of “providing out-of-region access to regional broadcast content” is an abstract idea that concerns “information distribution that is untethered to any specific or concrete way of implementing it.” Slip op. at 7. The Federal Circuit analogized this abstract idea to other ideas that it recently found to be abstract. See In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 610 (Fed. Cir. 2016) (method for recording and administering digital images); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (method for distributing copyrighted content over the Internet). It also distinguished this abstract idea from other patents found to be directed toward patentable subject matter. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (systems used to enable host websites to avoid losing visitors when those visitors clicked on an advertisement on the host site); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (specific improvement to the way computers operate, embodied in a self-referential table). In applying step two of the Mayo/Alice framework, the Federal Circuit held that there was no “inventive concept” and that the claimed “generic computer implementation” was not sufficient to transform the abstract idea into a patentable one. Slip op. at 15, 16. Affinity also failed to convince the panel that the claimed use of a user-downloadable applicable to enable users to access the broadcasts constitutes an inventive concept.
Affinity Labs of Texas, LLC v. Amazon.com Inc., Case No. 2015-2080 (Fed. Cir. Sept. 23, 2016).
The claims at issue in this appeal are directed to a network-based media system with a customized user interface for content streaming. Under step one of the Mayo/Alice framework, the Federal Circuit held that the concept of “delivering user-selected media content to portable devices” is an abstract idea, and that the patent at issue “does not disclose any particular mechanism for wirelessly streaming content to a handheld device.” Slip op. at 6, 7. Affinity’s argument that the claimed element of a “customized user interface” is not an abstract idea was rejected. In applying step two of the Mayo/Alice analysis, the Federal Circuit held that nothing in the patent’s claims or specification constitutes a “concrete implementation of the abstract idea” that would embody an “inventive concept.” Slip op. at 10. The Federal Circuit stated that the claimed features were described and claimed generically rather than with the specificity necessary to show how the components provide a concrete solution to the problem addressed by the patent. Id. at 11.
Also noteworthy in this case is the Federal Circuit’s emphasis on the importance of the specification to the § 101 determination. In finding that the claims did not embody an inventive concept, the Court pointed to the specification, stating that “the specification makes clear that any technology capable of wireless communication of audio information to the device would be covered.” (Emphasis added.) Slip op. at 11. Moreover, the Federal Circuit noted that “neither the claim nor the specification reveals any concrete way of employing a customized user interface.” (Emphasis added.) Id.
These cases illustrate that claims directed toward performance of function will likely fail to satisfy 35 U.S.C. § 101 if they merely recite generic computer components that carry out the function. Rather, to satisfy the § 101 determination, the claims must describe a technical solution to a technical problem. Moreover, the features recited in the claims should be described in the specification with the specificity necessary to show how the recited features provide the technical solution to the technical problem.