The United States Patent and Trademark Office (USPTO) published new and updated guidelines on subject matter eligibility on February 5, 2018, including a quick reference sheet on decisions holding patent claims eligible and identifying abstract ideas, an index of examples, and a chart of subject matter eligibility court decisions.
One update to note in the guidelines is the addition of the Federal Circuit’s recent nonprecedential decision in Move, Inc. v. Real Estate Alliance, No. 2017-1463 (Fed. Cir. Feb. 1, 2018), where the Court addresses the eligibility of a claim directed to a graphical user interface (GUI). Move stands in contrast to the other GUI cases included in the USPTO’s guidelines, such as the Federal Circuit’s decisions in Core Wireless and Trading Technologies holding that certain GUI related claims are directed to patent-eligible subject matter. Additionally, example 23 in the USPTO’s July 2015 Update Appendix 1: Examples suggests that a claim that recites specific graphical features that scale and relocate textual information in overlapping windows is directed to patent-eligible subject matter because it “improves the ability of the computer to display information and interact with the user” and “improves the functioning of the basic display function of the computer itself.” July 2015 Update Appendix 1: Examples, at pp. 11-12.
The introduction of Move to the guidelines shows that not all GUI-related claims are created equal under the USPTO guidelines and the two-step patent-eligibility analysis articulated in Alice Corp. Pty. V. CLS Bank Int’l, 134 S. Ct. 2347 (2014). In Move, the Federal Circuit affirmed that a method claim reciting a “zoom feature” for geographically searching for real estate properties is directed to patent-ineligible subject matter under 35 U.S.C. § 101. By way of background, Real Estate Alliance Ltd. (“REAL”) is the owner of U.S. Pat. Nos. 5,032,989 (“the ’989 patent”) and 4,870,576, and appealed the district court’s summary judgment holding, inter alia, the ’989 patent invalid for claiming ineligible subject matter under 35 U.S.C. § 101. The ’989 patent relates generally to a method of searching for real estate properties geographically on a computer, and claim 1 of the ‘989 patent describes a “zoom” feature where a user can zoom in on a map in order to identify available real estate properties within the database that are located within the zoomed-in area. Representative claim 1 reads as follows:
1. A method using a computer for locating available real estate properties comprising the steps of:
a) creating a database of the available real estate properties;
b) displaying a map of a desired geographic area;
c) selecting a first area having boundaries within the geographic area;
d) zooming in on the first area of the displayed map to about the boundaries of the first area to display a higher level of detail than the displayed map;
e) displaying the zoomed first area;
f) selecting a second area having boundaries within the zoomed first area;
g) displaying the second area and a plurality of points within the second area, each point representing the appropriate geographic location of an available real estate property; and
h) identifying available real estate properties within the database which are located within the second area.
The panel, consisting of Judges Lourie, Wallach, and Stoll, held claim 1 ineligible under section 101 in view of the two-step patent eligibility test articulated in Alice.
Under step 1 of Alice, the Court agreed with the district court’s analysis, holding that claim 1 of the ’989 patent is “directed to the abstract idea of ‘a method for collecting and organizing information about available real estate properties and displaying this information on a digital map that can be manipulated by the user.’” Op. at 8. Specifically, the Court noted that “[c]laim 1 is aspirational in nature and devoid of any implementation details or technical description that would permit us to conclude that the claim as a whole is directed to something other than the abstract idea identified by the district court.” Op. at 8; see also Op. at 10 (“While the claim limitations provide steps for using the computer to perform the search, they contain no technical details or explanation of how to implement the claimed abstract idea using the computer.”). Notably, the Court dismissed the graphical “zooming in” on a selected geographical area feature of the claim, explaining that “[i]nstead of focusing on the technical implementation details of the zooming functionality, for example, claim 1 recites nothing more than the result of the zoom.” Op. at 11. (emphasis added). The Court further distinguished between “technological improvements” and non-technical “improvements in the identification of available real estate properties.” See Op. at 12 (“While the ideas of storing available real estate properties in a database and selecting and displaying a particular geographic area may well be improvements in the identification of available real estate properties, there is no evidence that these ideas are technological improvements.”).
Next turning to Alice step two, and again focusing on the zoom feature, the Court notes that “the claim language does not explain what is inventive about the zoom feature or explain how it is accomplished,” and highlights “the specification’s teaching that the invention can be performed using a generic ‘IBM or compatible personal computer system.’” Op. at 14. REAL attempted to fill in the gap with an expert declaration, which provided: “It was considered neither routine nor conventional in the mid-1980s for a computer-displayed map to be able to zoom to display a higher level of detail in the sense of displaying information that wasn’t present at the lower level of detail at all, and this zooming step cannot be performed by a human.” Op. at 13. The Court, however, characterized such testimony as “conclusory,” noting that there are “no citations to support this assertion” and that it “contains no additional rationale.” Opp. at 14. Ultimately, the Court found that “the failure to provide any implementation details for the zoom feature suggests that the zoom feature utilizes only existing computer capabilities,” and affirmed the district court’s ruling that the claim is directed to patent-ineligible subject matter. Opp. at 14.
It will be interesting to see how the USPTO (and courts) will assess the eligibility of claims directed to graphical user interfaces (GUI) in view of the Move decision. As is clear from the Court’s analysis, patent practitioners would be well advised to include specific details in the claim and the specification not only as to how a claimed interface is achieved, but why it offers a technical solution to a technical problem in the art.