One Abstract Idea + Another Abstract Idea = An Abstract Idea

Before Prost, Lourie, and Reyna. Appeal from the District Court for the Northern District of California.

Summary: A patent directed to a medley of mental processes with no inventive concept is patent ineligible under 35 U.S.C. § 101.

PersonalWeb sued EMC, VMware, Facebook, Google, and YouTube for patent infringement of three patents. The patents are directed to data-processing systems that assign unique names to data items based on the data’s content, referred to as content-based identifiers. The defendants moved for judgment on the pleadings that the patents were patent ineligible under 35 U.S.C. § 101. The District Court found that the patents were directed to a three-step process of 1) receiving a content-based identifier, 2) comparing that content-based identifier against something else such as another content-based identifier or a request for data, and 3) providing access to, denying access to, or deleting data. The District Court found that the claims were patent ineligible under 35 U.S.C. § 101 after applying the two-step framework in Alice.

The Federal Circuit affirmed. The Federal Circuit held that each step of the claimed three-step process was an abstract idea of a mental process. Although step one in Alice looks at the claims as a whole, the Federal Circuit held that adding one abstract idea to another abstract idea merely amounts to yet another abstract idea. Proceeding with step two in Alice, the Federal Circuit held that any improvements purported by PersonalWeb that could transform the claim into a patent-eligible application were merely restatements of the abstract ideas of the claims themselves. As such, the claims failed step two by lacking an inventive concept that was significantly more than the abstract idea itself. The Federal Circuit agreed with the District Court that there was nothing inventive about any claim details, individually or in combination, that was not itself abstract.

Editor: Paul Stewart

Written by: Benjamin L. Black & Kendall Loebbaka