Be Specific: Further Thoughts from Two-Way Media to Avoid a 101 Misstep
Developments on the topic of patent subject matter ineligibility continue to progress rapidly. In this piece we revisit the Federal Circuit Court decision in Two-Way Media v. Comcast. This case provides comments in part on the role the patent specification should play when looking for inventive concepts in the second step of the Alice/Mayo test. Two-Way also serves as an important reminder to patent professionals to avoid conflation of the § 101 subject matter eligibility inquiry with § 102 and § 103 novelty and obviousness considerations.
At stake in the trial were four patents (5,778,187, 5,983,005, 6,434,622, 7,266,686) held by Two-Way Media, relating to a multicasting system and method for transmitting audio/visual information over a communication network such as the internet. The question before the court was whether said patents were directed towards an abstract idea. Traditional internet communications are unicast, meaning they involve only one device sending information to one other device. Multicasting, in contrast, involves one computer sending information to multiple receiving computers, and is necessary in order to support tasks such as livestreaming or video conferencing. In a unanimous decision, the Circuit Court affirmed the District Court decision in favor of Comcast, ruling that all of the Two-Way Media patents in dispute were invalid as they are abstract ideas, and thus ineligible subject matter according to U.S.C. § 101. For a complete accounting of the court’s decision and the case in dispute, see our recent previous article.
Prior to the Circuit Court ruling, the District Court had refused (correctly) to consider evidence submitted by Two-Way Media that purportedly showed the novelty and nonobviousness of their invention, because “[t]he novelty and nonobviousness of the claims under §§ 102 and 103 does not bear on whether the claims are directed to patent-eligible subject matter under § 101.” (Emphasis added.) The Circuit Court agreed with this conclusion, noting that “‘even assuming’ that a particular claimed feature was novel does not ‘avoid the problem of abstractness’” (citing and quoting Affinity labs). This conflating of § 101, § 102 and § 103 is a common mistake made by even experienced patent professionals, but it is important to remember that questions of novelty and nonobviousness should not be considered until the eligibility of a claimed invention is first established, as it is entirely possible for an invention to be novel and nonobvious but still be an ineligible abstract idea. Subject matter eligibility is a threshold inquiry.
The court also weighed in on the proper use of the patent specification when determining the eligibility of a patent’s subject matter. Under the Alice/Mayo two-step procedure, determining eligibility entails first determining whether an invention is ‘directed to’ an ineligible subject matter (consisting of a law of nature, natural phenomena, or an abstract idea), and second, should the invention be found to be directed to an ineligible concept, whether the invention contains any saving ‘inventive concepts’ . . . or ‘elements or a combination of elements … sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (Mayo v Promethius).
In their examinations, both the District Court and Circuit Court failed to find any inventive concepts in the four patents owned by Two-Way Media. While Two-Way argued that their invention was a scalable computer architecture that solved a myriad of technological problems, the District Court found no description of such an architecture within the patent claims. In their examination of the patent claims, the District Court found only references to general computer components, which is not sufficient to be considered an inventive concept under step 2 of Alice. The Circuit Court agreed, emphasizing that only elements of the patent claims are eligible for consideration as potential inventive concepts:
The main problem that Two-Way Media cannot overcome is that the claim – as opposed to something purportedly described in the specification – is missing an inventive concept. While the specification may describe a purported innovative ‘scalable architecture,” claim 1 of the ‘187 patent does not.
This ruling is in conflict with the previous Circuit Court decision of Amdocs v Openet. That case also involved a network architecture that was well described in the specification, but only vaguely so in the claims. In that case however, details from the specification were read into the claims. For example, words such as “enhance,” were inferred to mean “to apply a number of field enhancements in a distributed fashion.” Judge Reyna, who wrote the decision in Two-Way, was also on the court in Amdocs, and strongly disagreed with that court’s use of the specification. From his Amdocs dissent:
The inquiry is not whether the specifications disclose a patent-eligible system, but whether the claims are directed to a patent ineligible concept.
Discusses only very broad, high-level functionality rather than details about how exactly that functionality is implemented, providing no information about the structure of the software.
The majority in Amdocs disagreed with this standpoint:
Though § 112 ¶ 6 permits the ‘means’ to be found in the patentee’s “specification,” meaning the written description and the claims of the patent, the dissent would save the patent’s eligibility under § 101 only if the claim at issue itself explicitly states the necessary ‘means.’
The opinions put forward by J. Reyna in the Amdocs dissent sound remarkably similar to the ruling in Two-Way, except now Reyna is in the majority. Surprisingly, J. Reyna makes no mention of Amdocs in his Two-Way verdict.
How courts should use the specification when looking for inventive concepts is a question that remains to be answered. It is well-established that the specification can be used to provide context for better understanding the technical benefits conferred by a particular claim. Courts seem divided, however, on the amount of information that can be imported into the claims from the specification.
-Michael Hinrichsen, PhD and Anthony Sabatelli, PhD, JD
Mike Hinrichsen received his Ph.D. in Molecular Biophysics and Biochemistry at Yale University. His thesis research was focused on using protein design to develop novel methods for imaging proteins and genomic loci in living cells. Prior to attending Yale, Mike graduated with a B. S. in Chemistry from the College of New Jersey.
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