Federal Circuit Further Clarifies Inventive Concept Under The Two-Part Mayo/Alice Test
In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, the Federal Circuit affirmed the decision of the District Court of Delaware that the Two-Way Media patents and claims were ineligible under 35 U.S.C. § 101. See the Federal Circuit decision here. Two-Way sued Comcast, alleging that Comcast violated U.S. Patent Nos. 5,778,187 (‘187); 5,983,005 (‘005); 6,434,622 (‘622); and 7,266,686 (‘686) relating to a “Multicasting method and apparatus”. These patents are directed to a “scalable architecture … or delivery of real-time information over a communications network”. This essentially refers to methods for streaming data over the internet to multiple users at a time. The outcome of this case teaches important lessons on how and where to define inventive concept under the two-part Mayo/Alice test.
The District Court of Delaware grouped the patents into two sets and evaluated patent eligibility by applying The Mayo/Alice two-part test. The first set included Patents ‘187 and ‘005. These patents did not pass the first step of Alice, as they are directed to a patent ineligible concept, namely the abstract idea of sending information, directing the sent information, monitoring receipt of the sent information, and accumulating records about the receipt of the sent information. The second set, Patents. ‘622; and ‘686, also did not fulfill step one of Alice, as they are directed to the abstract ideas of monitoring the delivery of real-time information (‘622) and of measuring the delivery of real-time information for commercial purposes (‘686). The District Court also found that all the patents failed to pass the second step of Alice, as the patent claims, both individually or in combination, neither contain elements that transform them into subject matter eligible concepts, nor improve upon the prior art. The District Court also determined that although the patent specifications recite the “scalable architecture”, the claims do not. Thus, the claims fail to show inventive concept. Furthermore, these patents in fact do not describe how to achieve the results of the claims.
Two-Way Media argued that the District Court oversimplified the patent claims. However, the Federal Circuit re-affirmed that the District Court did not oversimplify and that the claims indeed failed to show an inventive concept that meets the second part of the Alice test. Throughout, the Federal Circuit cited and compared and contrasted this case to other recent computer software cases that had properly defined patent eligible subject matter under 35 U.S.C. § 101, namely BASCOM, Enfish, and McRO.
This current case further demonstrates how The Mayo/Alice test was implemented to define patent subject matter eligibility. As well, it is necessary to demonstrate inventive concept not only in the specifications but in the patent claims as well. For more information on eligibility under 35 U.S.C. § 101, see the following Dilworth article.
–David Puleo and Anthony D. Sabatelli, PhD, JD
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