On March 6, 2020 the US Court of Appeals upheld a USPTO Patent Trial and Appeal Board finding that a data delivery system including the allocation of dedicated hardware for targeted advertising did not constitute patent-eligible subject matter under 35 U.S.C. §101. (Nos. 2018-2239, 2019-1000, Customedia Techs., LLC v. Dish Network Corp.)
Digital advertisements are served to end-users through data delivery networks where user applications and systems may request and receive advertisement data from a central advertisement data provider. Customedia owned patents US No. 8,719,090 and US No. 9,053,494 claiming a “data delivery system for providing automatic delivery of multimedia data products … comprising: a remote account transaction server … and a programmable local receiver unit .. including at least one individually controlled and reserved advertising data storage section.” Dish Network Corporation, collectively with Dish Network LLC, petitioned for a Covered Business Methods review of multiple claims of the patents. The PTAB found the disputed claims patent ineligible under 35 U.S.C. §101. Customedia appealed.
Following the two-step analysis for patent-eligible subject matter set forth in Alice Corp. v. CLS Bank International, the Federal Circuit upheld the PTAB’s determinations, finding the disputed claims patent ineligible under 35 U.S.C. §101, as the claims “are not directed to a patent-eligible improvement to computer functionality. The Court found the claims to be at most an improvement to the abstract concept of targeted advertising where a computer is merely used as a tool.
Under step one of Alice, the Federal Circuit found that the reservation of storage space for advertising data was not sufficient in improving computer functionality, as these claims “do not enable computers to operate more quickly or efficiently, nor do they solve any technological problem,” and as such amounted to merely invoking the computer as a tool. Subsequently applying step two in search of a saving inventive concept, the Federal Circuit found that the claimed innovative use of dedicated storage was not sufficient because the use of mundane components, described in the specification themselves as “any storage device for audio/video information known in the art,” amounts to “a recitation of what is well-understood, routine, and conventional.” (SAP Inc. v. Investpic, LLC) As such, the Federal Circuit affirmed that the disputed claims were patent ineligible under 35 U.S.C. §101, both being directed at the abstract concept of targeted advertising implemented using computers, and lacking a saving inventive concept.
Practice Notes: When drafting an application, please keep the following in mind:
A novel combination of common components, in this case a novel use of common hardware or software components, in and of itself is not sufficient to be determined an inventive concept. Claims should recite concrete improvements resulting from the novel combination itself. The improvement should be to the functionality of the computer or the network platform itself for the claim to be directed to a patent eligible subject matter.
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