Following a wave of decisions previously covered by Dykema, Judge Robinson of the United States District Court for the District of Delaware issued another decision holding that a software-based patent passes muster post-Alice. In Treehouse Avatar LLC v. Valve Corp., Civ. No. 15-427-SLR (D. Del. Mar. 22, 2016, Order), Judge Robinson opined on the trajectory of software patents and cautioned how Section 101 analysis might be going too far at the pleadings stage.
In her decision, Judge Robinson emphasized that the primary purpose of Section 101 is to prevent preemption of fundamental principles—laws of nature, physical phenomena, and abstract ideas. Tracing the history of Section 101’s treatment by the Supreme Court and Federal Circuit, Judge Robinson explained that the application of fundamental principles in particular structures or processes were not meant to be preempted by Section 101, and in many instances such structures or processes are in fact patent-eligible. The Judge noted she was “struck by the evolution of the [Section] 101 jurisprudence,” and how many patents which would have survived Section 101 analysis at the time of issuance are today routinely invalidated at the pleadings stage based upon the imposition of heightened post-Alice standards. Particularly troubling to Judge Robinson was how courts were to balance Section 101 inquiries with other aspects of relevant patent law, such as enablement under Section 112, or non-obviousness under Section 103. Judge Robinson was additionally perplexed as to how courts were to conduct a thorough Aliceanalysis when the degree of specificity required pursuant to Section 101 remains unclear. She found particularly ironic the enhanced scrutiny of computer software by U.S. courts, given the growing concern regarding foreign entities pirating U.S. intellectual property.
Judge Robinson noted it was a “given” that computer software would involve an abstract idea, thus triggering step two of the Alice analysis—whether the patent involves “significantly more” than the abstract idea itself. Focusing next on the Federal Circuit’s post-Alice decision, DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), she discussed the patentability of ideas which solve problems unique to computer technology. In doing so, Judge Robinson held a patent directed towards a method of collecting user information, customizing an avatar based upon this user information, and allowing a user to see the avatar customization in real time in a plurality of character-enabled websites was not the “routine and conventional” use of a computer, but was instead a novel solution to a technologically-based problem. Additionally, the avatar technology disclosed did not preempt others from avatar use generally but was instead focused on the specific steps needed to customize an avatar in real time based upon a customer’s specific attributes. Because the idea was more than just the implementation of an abstract idea on a computer, and did not create a risk of preemption of all avatars, the patent-at-issue passed step two of Alice.
Decisions like those from Judge Robinson, as well as several other federal district courts, shows the post-Alice wave invalidating computer software applications at the pleadings stage may be dying down as more courts consider the effects of Alice on the field of patent law as a whole. Of course, it may also show that the high success defendants enjoyed in early Alice opinions was the result of patents truly directed simply towards abstract ideas without significantly more.