Patent Eligibility and Automation of Manual Processes
By Babak Akhlaghi on October 16, 2023.
In PersonalWeb Techs. LLC v. Google LLC, YouTube, LLC, Case No. 20-1543 (Fed. Cir. Aug. 12, 2021), the Federal Circuit held claims directed to data-processing systems that assign unique names to each data item based on its content are not patent eligible under 35 U.S.C. § 101.
PersonalWeb Technologies filed a lawsuit against Google LLC, along with others, alleging infringement of three U.S. patents. The patents include U.S. Patent Nos. 7,802,310 (“the ’310 patent”), 6,415,280 (“the ’280 patent”), and 7,949,662 (“the ’662 patent”). In brief, they pertain to data-processing systems that assign unique names to each data item based on its content. The names, also known as content-based identifiers, are generated using mathematical algorithms like cryptographic hashes. Notably, these identifiers change when the content of the data item changes. The patents cover various data-management functions that utilize these identifiers. The court deemed the patents invalid under 35 U.S.C. § 101, ruling that they are not patent eligible for patenting. PersonalWeb appealed.
Representative claim 24 of the ‘310 patent recites:
24. A computer-implemented method implemented at least in part by hardware comprising one or more processors, the method comprising:
(a) using a processor, receiving at a first computer from a second computer, a request regarding a particular data item, said request including at least a content-dependent name for the particular data item, the content-dependent name being based, at least in part, on at least a function of the data in the particular data item, wherein the data used by the function to determine the content-dependent name comprises at least some of the contents of the particular data item, wherein the function that was used comprises a message digest function or a hash function, and wherein two identical data items will have the same content-dependent name; and
(b) in response to said request:
(i) causing the content-dependent name of the particular data item to be compared to a plurality of values;
(ii) hardware in combination with software determining whether or not access to the particular data item is unauthorized based on whether the content-dependent name of the particular data item corresponds to at least one of said plurality of values, and
(iii) based on said determining in step (ii), not allowing the particular data item to be provided to or accessed by the second computer if it is determined that access to the particular data item is not authorized.
The Patent Act defines patent-eligible subject matter as any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. However, there is an exception that laws of nature, natural phenomena, and abstract ideas are not patent eligible. To determine if a claim is patent eligible, a two-step framework outlined in Supreme Court cases Mayo and Alice is used. In the first step, we determine if the claim is directed to a patent-ineligible concept such as an abstract idea. If so, we move to the second step to evaluate if the elements of the claim transform it into a patent-eligible application of the patent-ineligible concept.
In this case, starting at step one, the Court considered the focus of the claimed advance over the prior art to determine if it is directed to patent-ineligible subject matter. The Court concluded that the claims are indeed directed to an abstract idea. PersonalWeb argued that the claims involve a unique, algorithm-derived, content-based identifier for data items in a networked computer that enables data retrieval and distribution without knowledge of the file system or conventional names. The district court, on the other hand, determined that the claims describe a three-step process involving the use and comparison of content-based identifiers, generated by hash or message digest function, for data access and deletion. The Federal Circuit agreed with the district court’s assessment, stating that the claims are directed to the use of an algorithm-generated content-based identifier to perform data-management functions such as controlling access, retrieving copies, and marking copies for deletion.
The Court noted that these functions are mental processes that can be performed by humans with pen and paper, clear sign of abstraction. The Court liked the claims to an example of librarians using content-based identifiers to control access, retrieve books, and eliminate duplicates further illustrates this point. Even though the claims involve a computer environment, they remain within the realm of abstraction. Therefore, the Court concluded that the claims are directed to an abstract idea.
The Court’s determined that each step in the progression of the claims represents an abstract concept. Firstly, the use of a content-based identifier was discussed, citing previous cases (Intell. Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017) and Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 910–11 (Fed. Cir. 2017)) that found content-based identifiers to be abstract. Secondly, comparing the content-based identifier against other values was deemed abstract as well, pointing to Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016) (determining whether each received content identifier matches a characteristic of other identifiers). Lastly, the data-management function, which differs across the asserted patents, was also considered abstract, citing to Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1327 (Fed. Cir. 2020) (stating “[c]ontrolling access to resources is exactly the sort of process that ‘can be performed in the human mind, or by a human using a pen and paper,’ which we have repeatedly found unpatentable.”)
The Court, however, was mindful that when evaluating the claims, they should be viewed as a whole. However, it still noted that connecting abstract ideas together by adding one to another does not change the fact that the overall concept involves using a content-based identifier to perform an abstract data-management function. PersonalWeb argued that the claims are not abstract because they offer a computer-based solution to address a problem specific to computer networks. However, the Court disagreed, stating that both the problems and the solution existed prior to the advent of computers. Ultimately, the Court held that the claims are directed to abstract ideas that utilize computers as tools, rather than on improving computers themselves. Therefore, the claims failed step one of the Alice test.
PersonalWeb argued that the claims are not abstract because they offer a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The Court disagreed. Here, both the problems (access to, retrieval of, and redundancy control of information) and the solution (names based on content) have long predated computers. PersonalWeb contended that the claims are not abstract because they claim “a new way of locating and distributing data in a computer network” that promises efficiency benefits. However, the Court replied that “[t]he fact that an identifier can be used to make a process more efficient . . . does not necessarily render an abstract idea less abstract,” Secured Mail, 873 F.3d at 910.
Moving to step two of Alice, the Court held that the claims fail this step as well. The Court pointed out that the supposed improvements presented by PersonalWeb simply restate the abstract concepts discussed earlier. According to the Court, the claims of the patents mentioned in the case capture improvements that are essentially abstract. For example, the claims of the ‘310 patent recite alleged improvement of using the content-based identifier to enforce use of valid licenses by refusing to provide access to a file without authorization. Even if these specific uses are not widely known or conventional, a claim for a new abstract idea is still considered an abstract idea. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018).
Simply put, there is nothing groundbreaking or inventive about the details of these claims that are not themselves abstract ideas. Therefore, the district court correctly stated that using a generic hash function, a server system, or a computer does not make these claims non-abstract. Simply adding computer functionality to enhance the speed or efficiency of a process does not make an otherwise abstract idea patent eligible. As a result, the Court held that the asserted claims also fail the second step of Alice test and are therefore patent ineligible.
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