Court: District Court, D. Delaware; March 22, 2016; Federal District Court
Plaintiff Improved Search LLC filed a complaint on March 25, 2015, alleging that defendant AOL Inc. infringed U.S. Patent Nos. 6,604,101 and 7,516,154. The court has jurisdiction under 28 U.S.C. §§ 1331 and 1338(a). Improved Search LLC is based in Florida, while AOL Inc. is incorporated in Delaware and headquartered in New York. The ’101 patent, concerning translingual translation methods, was issued on August 5, 2003, and the ’154 patent, related to cross-language advertising, was issued on April 7, 2009. The plaintiff accuses AOL's "AOL Search" service of infringing specific claims from both patents.
The court is currently reviewing AOL's motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), which assesses the sufficiency of the complaint's factual allegations. The standard requires plaintiffs to present a "short and plain statement" of their claims, providing fair notice to the defendant. The analysis involves separating factual from legal elements, accepting the facts as true, and determining if these facts show a plausible claim for relief. Courts may consider the complaint, relevant public records, and attached documents while ensuring that the non-moving party has the right to present evidence to support its claims. The analysis is context-specific, relying on judicial experience and common sense rather than probability requirements at the pleading stage.
35 U.S.C. § 101 outlines the categories of patentable subject matter, which include processes, machines, manufactures, and compositions of matter. A process is defined as a method that can involve new uses of existing processes or materials. The Supreme Court describes a process as a series of acts performed on materials to produce a result, emphasizing the importance of the process itself over the tools used. Three exceptions to patent eligibility are established: laws of nature, physical phenomena, and abstract ideas, which must remain free for public use to avoid hindering further innovation. Although these exceptions cannot be patented, the Court allows for patent protection when a law of nature or abstract idea is applied in a way that does not preempt all uses of the underlying principle. To differentiate between non-patentable concepts and eligible applications, claims are first assessed to determine if they pertain to these exceptions. If they do, an analysis follows to identify additional elements that may transform the claim into a patent-eligible application. This requires an inventive concept beyond merely stating the law of nature.
Adding conventional and well-understood steps alone does not render an unpatentable law of nature patent-eligible, as established in Mayo, 132 S.Ct. at 1298. Activities deemed purely conventional or obvious prior to a solution do not transform such laws into patentable applications. Limitations that merely confine a formula to a specific technological context or include insignificant post-solution activities fail to overcome the prohibition against patenting abstract ideas, as noted in Bilski II, 561 U.S. at 610-11. The mere inclusion of a generic computer in a claim does not suffice to make an abstract idea patentable, as articulated in Alice, 134 S.Ct. at 2358. Given the prevalence of computers, generic computer implementation alone does not assure that a process extends beyond a mere attempt to monopolize the abstract idea.
The first step of the Alice framework generally recognizes that computer-implemented patents involve abstract ideas, while the second step assesses whether claims merely adapt known business practices to the Internet or address a problem unique to computer technology. The Federal Circuit's decision in DDR Holdings, LLC v. Hotels.com, L.P. illustrates this distinction, where claims focused on retaining website visitors were deemed to address a specific Internet-related problem, rather than merely adapting a pre-Internet business model. The court found that while the concept of a store within a store was known, it did not account for the unique challenges of the Internet, such as user mobility and the nature of online interactions. Consequently, the claims were distinct enough from those in Ultramercial, as they specified how Internet interactions were manipulated to achieve a particular outcome, rather than generically claiming an abstract business practice. Thus, the claims of the ’399 patent were determined to be fundamentally different from those found in Alice and similar cases, as they did not merely embody an abstract concept.
The ’399 patent's claims do not represent a complex technological invention like advanced digital data compression, nor do they constitute a common business method applied to the Internet or conventional computer functions as seen in prior cases such as Alice, Ultramercial, and buySAFE. The Federal Circuit, in DDR, established that for a computer-implemented invention to qualify as patentable, it must provide a specific solution to a distinct Internet-related problem, firmly rooted in computer technology, avoiding mere conventional use of the Internet. Since DDR, the Federal Circuit has not upheld any additional computer-implemented inventions as patent-eligible under Section 101. For example, in Intellectual Ventures, the court analyzed claims related to website customization, deeming them abstract ideas that lacked an inventive concept necessary for patent eligibility. The court compared the claims' information tailoring to traditional practices like customized newspaper inserts, finding no inventive concept beyond applying an abstract idea on a generic computer. Unlike DDR, where the invention solved a unique Internet problem by creating a hybrid web page, the Intellectual Ventures claims did not address Internet-specific issues, rendering DDR inapplicable.
The court notes a significant shift in 101 jurisprudence regarding the patentability of computer programs, transitioning from outright rejection to a framework that now requires patent claims to address a problem rooted in computer technology with solutions that are both innovative and specific enough to avoid pre-emption risks. This heightened specificity poses challenges, as many claims that would have previously survived scrutiny under 101 now face uncertainty due to these new standards. The court references DDR as a benchmark for evaluating claims, emphasizing that they must delineate a computer-technology-related problem and provide a sufficiently detailed solution. The concern regarding pre-emption can typically be assessed during motions to dismiss or for judgment on the pleadings, while determining the second requirement's specifics may necessitate factual inquiries post-discovery.
Regarding claim construction, the Federal Circuit does not mandate that district courts must first construe claims before assessing subject matter eligibility, though a clear understanding of the claims is beneficial. While the parties have not raised claim construction issues, their arguments surrounding invalidity are based on the patents' character and claim language, allowing the court to proceed with its 101 analysis without needing preliminary claim construction.
The T01 patent addresses the challenges of conducting multilingual searches on the Internet, particularly for non-English speaking users, who make up approximately 75% of Internet users. It details a method and system for translingual searches that includes dialectal standardization, pre-search translation, and post-search translation. An example illustrates the problem, where searching for "shrimp caviare" yielded no results until the Chinese equivalent "xiazi" was used, resulting in twenty-four hits.
The patent's three-stage process involves:
1. **Dialectal Standardization** - Identifying and standardizing keywords from a query to a commonly recognized term.
2. **Pre-Search Translation** - Translating the standardized keyword into the target language for use in the search engine.
3. **Post-Search Translation** - Translating search results back into the source language upon user request, allowing for either machine or well-translated options.
Claim 1 outlines a method for contextual search and retrieval across languages, detailing steps from query reception to obtaining search results in the target language.
The T54 patent, a continuation of the T01 patent, expands on this by incorporating a system for delivering advertisements in the user's native language during cross-language searches. The server fetches relevant ads based on the search keywords, which can be presented either in the source or translated from the target language.
Claim 1 outlines a method for cross-language advertising during a contextual search on a computer network. It involves several key steps: receiving a user query in one language, extracting content words, standardizing these words dialectally, translating them into a second language, and conducting a contextual search in that second language using a search engine. The method returns search results, including URLs and documents, and involves searching a database for advertising cues relevant to the content word.
In analyzing the patent under the Alice framework, the court assesses whether the claims represent patent-ineligible concepts, such as abstract ideas. The defendant argues that the method resembles tasks a human could perform, categorizing it as an abstract idea of foreign language document searching. The defendant further claims that the ’154 patent adds advertising steps to this abstract concept.
The court explains that merely breaking down a method into human-performed tasks does not determine its abstract nature. It distinguishes between traditional business practices adapted for the internet and those inherently rooted in computer technology. The methods discussed address the specific challenge of retrieving documents in both the query and target languages, thus presenting a level of complexity beyond mere business methods.
In the second step of the Alice analysis, the court notes that the methods described in the patents provide a detailed series of steps designed to optimize search results for target language URLs. The ’154 patent combines translingual searching with targeted advertising, specifying how internet interactions yield results. The court concludes that these methods are not routine or conventional uses of technology, as they entail specific steps that prevent monopolizing the underlying ideas.
As a result, the court denies the defendant's motion to dismiss, indicating that the patents at issue do not merely encapsulate abstract ideas but offer a significant and specific technological solution. An appropriate order will follow.
The motion to dismiss by the defendant is denied, as determined on March 22, 2016. The machine-or-transformation test may still aid in assessing patent eligibility under the Alice framework. A process can qualify for patent protection if it is linked to a specific machine or transforms an article into a different state. Software is viewed as a method for organizing human activities. A detailed description of representative claim 19 from U.S. Patent No. 7,818,399 outlines a system for an outsource provider managing web pages with commercial links, involving data storage, user signal reception, source page identification, and dynamic page generation. Additionally, claim 1 of U.S. Patent No. 7,603,382 describes a system for delivering personalized web pages based on user navigation and personal characteristics. Various case citations support these points, reflecting the evolving interpretation of patent eligibility in relation to software and online systems.
In Paone v. Broadcom Corp., the district court emphasized that U.S. Patent No. 6,259,789 does not merely involve abstract encryption but claims a specific method of encrypting data. The invention dynamically customizes web pages in real time based on viewer information and utilizes an interactive interface, which the court interpreted as a tailored communication medium between users and information providers. The court's reasoning references the rejection of pre-Internet analogs in DDR and critiques past positions on patent eligibility, particularly regarding computer-implemented inventions. Judge Plager, dissenting in Dealertrack, argued that patent invalidity should be addressed through specific statutory provisions (Sections 102, 103, 112, and 251) before delving into the broader eligibility under Section 101. The Federal Circuit has indicated that claims must specify how computer hardware is programmed to carry out the patented methods, as vague programming details could undermine enforcement. A meaningful limitation on claims arises when the machine significantly contributes to the method's performance rather than simply facilitating faster computations.
Defendant utilized claim 22 as a representative claim while referring to other claims as necessary. However, the plaintiff retracted its allegations regarding claim 22, asserting that claim 1 is a more representative claim of the T01 patent. In its reply, the defendant compared claims 1 and 22, leading the court to consider claim 1 of the T01 patent as representative based on precedents that support the treatment of substantially similar claims linked to the same abstract idea as representative. The court illustrated the process of keyword identification and translation for both bilingual and monolingual individuals, emphasizing that the methods described do not differ significantly. The plaintiff contended that the 154 patent is also represented by claim 1 and argued that the defendant's failure to address other claims precludes conclusions about their validity. However, the concept of a representative claim was noted, and the plaintiff did not present a claim that would lead to a different conclusion under the Section 101 analysis. Consequently, the court similarly treated claim 1 of the ’154 patent as representative.
