IBM’s Patent Battle with Zillow: Mapping Out the Limits of Eligible Subject Matter

Executive Summary

IBM owns a patent (“‘789 patent”) for a method of selecting an area on a map by drawing a shape and limiting the displayed information to the selected area of the map. IBM also owns a patent (“‘389 patent”) for methods of displaying layered data on a spatially-oriented display based on nonspatial attributes and emphasizing objects in layers of interest by bringing them to the top of the display while deemphasizing other layers. In 2019, IBM filed a patent infringement suit against Zillow, claiming infringement of its patents. Zillow responded by asserting that the claims of IBM’s patents were not eligible subject matter under $ 101. The Court agreed with Zillow (citation provided in Detailed Discussion below).

The Court noted that the ‘789 patent is result-oriented, describing functions such as presenting, receiving, selecting and synchronizing without explaining how to accomplish them. It is written in “result-based functional language” that does not describe how to achieve the results in a non-abstract way. The specification also does not disclose any technical improvements or suggest one that was achieved, resulting in the conclusion that the ‘789 patent is directed to an ineligible abstract idea. Similarly, the Court noted that the ‘389 patent’s purely functional steps—of organizing information based on color, lines, or other patterns, and then layering and re-layering said information—do not describe how these functions are performed and could be done using paper and ink and have long been done by cartographers.

Detailed Discussion

Applying the Supreme Court’s Alice decision, the US Court of Appeals for the Federal Circuit determined that claims related to graphical displays and user interfaces were not eligible subject matter as they amounted to abstract ideas. IBM v. Zillow Group, Inc., Case No. 21-2350 (Fed. Cir. Oct. 13, 2022) (Reyna, Hughes, Stoll, JJ.) (Stoll, J., dissenting in part).

IBM owns U.S. Patent No. 9,158,789 (“the ‘789 patent”), which describes a method for selecting an area on a map by drawing a shape and filtering the displayed data to that area of the map. The system then synchronizes which elements on the map and its associated list are shown as “selected.” Representative claim 8 recites:

8. A method for coordinated geospatial and list-based mapping, the operations comprising:
presenting a map display on a display device, wherein the map display comprises elements within a viewing area of the map display, wherein the elements comprise geospatial characteristics, wherein the elements comprise selected and unselected elements;
presenting a list display on the display device, wherein the list display comprises a customizable list comprising the elements from the map display;
receiving a user input drawing a selection area in the viewing area of the map display, wherein the selection area is a user determined shape, wherein the selection area is smaller than the viewing area of the map display, wherein the viewing area comprises elements that are visible within the map display and are outside the selection area;
selecting any unselected elements within the selection area in response to the user input drawing the selection area and deselecting any selected elements outside the selection area in response to the user input drawing the selection area; and
synchronizing the map display and the list display to concurrently update the selection and deselection of the elements according to the user input, the selection and deselection occurring on both the map display and the list display.

FIG. 5 illustrates an embodiment of claim 8.

IBM also owns U.S. Patent No. 7,187,389 (“the ‘389 patent”), which describes methods of displaying layered data on a spatially-oriented display based on nonspatial attributes, and emphasizes objects in layers of interest by bringing them to the top of the display while deemphasizing other layers. Representative claim 1 recites:

1. A method of displaying layered data, said method comprising:
selecting one or more objects to be displayed in a plurality of layers;
identifying a plurality of non-spatially distinguishable display attributes, wherein one or more of the non-spatially distinguishable display attributes corresponds to each of the layers;
matching each of the objects to one of the layers;
applying the non-spatially distinguishable display attributes corresponding to the layer for each of the matched objects;
determining a layer order for the plurality of layers, wherein the layer order determines a display emphasis corresponding to the objects from the plurality of objects in the corresponding layers; and
displaying the objects with the applied non-spatially distinguishable display attributes based upon the determination, wherein the objects in a first layer from the plurality of layers are visually distinguished from the objects in the other plurality of layers based upon the non-spatially distinguishable display attributes of the first layer.

IBM’s expert demonstrated how color and opacity can be used to highlight various layers of a data set, with darker “A” objects on the left being more prominent, and lighter “D” objects on the right.

In 2019, IBM filed a patent infringement suit against Zillow, claiming infringement of seven of its patents. Zillow responded by filing a motion for judgment on the pleadings, objecting that the claims of IBM’s patents were not eligible subject matter under § 101. The district court accepted this argument as to both the ’389 and ’789 patents, finding them to be directed to abstract ideas with no inventive concept, and hence not patent eligible. IBM appealed.
Section 101 provides that a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. This provision contains an implicit exception: “Laws of nature, natural phenomena, and abstract ideas are not patentable.” The Supreme Court has established a two-step framework for evaluating patent eligibility under § 101. At step one, we determine whether a patent claim is directed to an unpatentable law of nature, natural phenomena, or abstract idea. If so, we proceed to step two and determine whether the claim nonetheless includes an “inventive concept” sufficient to transform the nature of the claim into a patent-eligible application of the exception.

U.S. Patent No. 9,158,789
The Court analyzed the ‘789 patent under Alice step one, noting that for software innovations, the step-one inquiry often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies as an abstract idea for which computers are invoked merely as a tool. The Court further noted that improving user experience using a computer application is not enough to make the claims patent- eligible.

The district court found that the ’789 patent is directed to an abstract idea of responding to a user’s selection of a portion of a map by simultaneously updating the map and co-displayed list. It reasoned that the method of claim 8 could be achieved manually using a printed map, transparent overlay, wet-erase marker, blank sheet of opaque paper, and scissors. To choose different areas, the user would have to erase previous mark and remove the paper before starting over. The court noted that these alterations were done long before computers existed; thus it concluded that the patent contemplated only computer automation of existing methods. The Federal Circuit agreed.

IBM argued that the ‘789 patent is patent-eligible because it provides a specific improvement in computer capabilities – an improved graphical user interface for interacting with geospatial data on a map and list display. In particular, IBM asserted that the patent improves the ability of users to identify and analyze relevant data in otherwise large data sets. The Court disagreed, stating that it has before held that identifying, analyzing, and presenting data to a user is not an improvement specific to computing. The selection and manipulation of information to provide “humanly comprehensible” amounts of data does not transform the abstract processes of information collection and analysis. Claims directed towards collection and comprehension of data on a computer network have repeatedly been held to be abstract.

The Court noted that the ‘789 patent is result-oriented, describing functions such as presenting, receiving, selecting and synchronizing without explaining how to accomplish them. It is written in “result-based functional language” that does not describe how to achieve the results in a non-abstract way. The claims and specification do not disclose any technical improvements or suggest one was achieved, resulting in the conclusion that the ‘789 patent is directed to an ineligible abstract idea.

Because the Court determined that the ’789 patent is directed to an abstract idea, it then turned its attention to Alice, step two. “In applying step two of the Alice analysis, we ‘determine whether the claims do significantly more than simply describe [the] abstract method’ and thus transform the abstract idea into patentable subject matter.” To do so, they must demonstrate additional features that are not well-understood, routine or conventional activities and constitute an inventive concept.

The district court found that the ‘789 patent’s inventive concepts, which involve receiving an input and synchronizing map and list displays, are simply restatements of the invention’s abstract goals rather than specific instructions on how to achieve these aims. They do not teach how the input is received or the map and list displays are synchronized, and the court concluded that the patent requires nothing more than generic computer technology. IBM argued that that the synchronized displays and the “user determined shape” limitations, among others, provide inventive concepts sufficient to pass muster under step two. The Court disagreed, noting that IBM failed to make convincing and specific arguments that any of the aspects of the claims are inventive. The given “synchronizing” and “user-determined shape” limitations are written in general functional language, without specifically relating to computer technology, which describe only an abstract method without providing further detail. Even if it did require the use of a computer, simply using generic computer concepts in a conventional manner does not meet the criteria for step two. The Court noted that it had previously rejected a similar “synchronization” limitation as representing insignificant post-solution activity when the claims did not provide any instructions on how to perform the synchronization outside “the addition of conventional computer components.” See, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244 (Fed. Cir. 2016).

U.S. Patent No. 7,187,389
The district court determined that the ‘389 patent is directed towards abstract ideas which involve categorizing and displaying information, along with changing the way it is presented upon user request. It noted that people have traditionally used visual markers such as shapes, colors, line patterns etc. to differentiate between items being represented visually. This could be done by hand, using transparent paper and colored pencils to form different layers, which could then be rearranged or redrawn as desired. On appeal, IBM argued that the district court erred by oversimplifying the patent and “drawing inaccurate analogies to manual methods.” It asserted that the ‘389 patent “disclose[s] improvements to the field of [graphical user interfaces] for managing networked objects using layered and nonspatial characteristics.”

The Court disagreed. The Court noted that the claims in the ‘389 patent simply organize and arrange sets of visual information into layers, and then display these layers on any type of generic display device. This process may be aided by a computer, but that does not mean that any computing technology is improved. The claims do not make computers run more efficiently or solve a technological problem; instead they provide users with an efficient way to process information faster. Similarly, the ‘389 patent describes operations such as selecting, identifying, matching, applying etc. without explaining how to do any of those tasks. Such functional claim language, without more, is insufficient for patentability under our law.

IBM argued that its invention is similar to one that was found patentable in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) because it focuses on specific implementations of presenting information on electronic devices. Core Wireless involved a patent directed to “improved display interfaces” of electronic devices that “allow a user to more quickly access desired data stored in, and functions of applications included in, the electronic devices,” particularly those with small screens like mobile telephones. The Court held that the asserted claims are related to an improved user interface for computing devices, and hence patentable because it fixed issues with navigating applications on small screens as highlighted throughout the patent’s specification. The Court also concluded that the claims addressed an improvement in the functioning of computers, particularly those with small screens.

Here, the Court noted that representative claim 1 of the ’389 patent is much broader than the asserted claims in Core Wireless. First, the ‘389 specification is not limited to computer screens or any device at all. Second, the specification fails to discuss improvements to specific types of device screens, but only generic displays and computer systems. The specification describes the technical problem as that the display of “any system that has large numbers of objects in many categories with relationships is difficult to understand.” This technical problem, the Court noted, is not specific to a computing environment. One could encounter this same occlusion problem when looking at a particularly cluttered paper map.

The patent’s solution to visually present information in a way that “aids the user in distinguishing between the various displayed layers” could be done using colored pencils and translucent paper, as noted by the district court. The manual method may take longer when moving objects between layers or rearranging layers; however, a patent to automate these “pen and paper methodologies” conserves human resources and minimizes errors; making it an abstract idea suitable for a “do it on a computer” patent. To this end, the Court noted that, unlike the claims in Core Wireless, the ‘389 patent does not improve any computer function or involve claim limitations specific to a computing environment. Instead, it addresses the problem of space limitations for any two-dimensional display and its solution is organizing and displaying information in layers, which is an abstract idea. Therefore, the patent is directed to an ineligible abstract idea.

Turning to step two of Alice, the district court concluded that the patent contained no inventive concept and merely used well-understood, routine, or conventional technology (a general-purpose computer) to more quickly solve the problem of layering and displaying visual data. On appeal, IBM argued that the patent’s inventiveness comes from improvements to the way a computer displays information specifically in using “nonspatial display attributes” (i.e., color, lines, etc.), “emphasized layers,” re-layering,” and “rematching” elements. It argued that “distinguishing data in a nonspatial manner was not purely conventional, nor was emphasizing and re-layering data to bring forth the most salient information.”

The Court disagreed, noting that the patent’s purely functional steps—of organizing information based on color, lines, or other patterns, and then layering and re-layering said information—could be done using paper and ink and have long been done by cartographers. And claims 8 and 12 add generic computer components and “merely restate their individual functions”—i.e., selecting, identifying, matching, re-matching, applying, determining, displaying, receiving, and rearranging—without describing how any of those functions are performed.

The Dissent
The dissent disagreed with the majority about the patent eligibility of at least some of the dependent claims of the ‘389 patent. The majority asserts that the problem solved by the ‘389 patent and its claims is not specific to a computing environment and concludes that all of the claims are directed to an abstract idea. However, claim 9 is directed to a specific improvement in a computer’s graphical user interface, much like the eligible claims from Core Wireless. The invention does more than automate a “pen and paper” method; it solves a technical problem with graphical user interfaces at the time of the invention by reciting a specific technique for reordering data on a computer display. Specifically, the dissent held that dependent claim 9 could be patent eligible. Claim 9 depends from claim 8. Claims 8 and 9 recite:

8. An information handling system comprising:
one or more processors;
a memory accessible by the processors;
a nonvolatile storage area accessible by the processors;
a display screen accessible by the processors; and
layered data display tool to display layered data on the display screen, the layered data display tool including:
logic for selecting one or more objects to be displayed in a plurality of layers;
identification logic to identify a plurality of non-spatially distinguishable display attributes, wherein one or more of the non-spatially distinguishable display attributes corresponds to each of the layers;
matching logic for matching each of the objects to one of the layers;
applicator logic to apply the non-spatially distinguishable display attributes corresponding to the layer for each of the matched objects;
determination logic for determining a layer order for the plurality of layers, wherein the layer order determines a display emphasis corresponding to the objects from the plurality of objects in the corresponding layers; and
display control logic to display the objects with the applied non-spatially distinguishable display attributes, wherein the objects in a first layer from the plurality of layers are visually distinguished from the objects in the other plurality of layers based upon the non-spatially distinguishable display attributes of the first layer.

9. The information handling system as described in claim 8 further comprising:
a rearranging request received from a user;
rearranging logic to rearrange the displayed layers, the rearranging logic including:
re-matching logic to re-match one or more objects to a different layer from the plurality of layers;
application logic to apply the non-spatially distinguishable display attributes corresponding to the different layer to the one or more re-matched objects; and
display logic to display the one or more re-matched objects.

The dissent noted the development of the claimed invention, including issues with existing approaches to displaying objects on a computer’s two-dimensional display. It was alleged that these methods resulted in a crowded display with objects overlapping each other, making it difficult or impossible to determine the details and relationships between information a user was trying to view. The expert declaration attached to the complaint explained that existing methods for displaying large amounts of “densely packed” data on a computer screen rendered the displayed data “incomprehensible.” IBM’s technical expert further explained how the use of layers in the claimed invention solved this problem, allowing users to dynamically manipulate the visualization of data to better review and scrutinize it. The expert also provided specific factual details related to how the claim limitations of re-layering and rematching “allows users to dynamically manipulate the visualization” of data on the computer display “to better support their ability to scrutinize and review the data.”