International Business Machines Corp. v. Zillow Group, Inc. et al., Appeal No. 2021-2350 (Fed. Cir. 2022)
In this week’s Case of the Week, the Federal Circuit affirmed a Rule 12(c) judgment on the pleadings that IBM’s U.S. Patent Nos. 9,158,789 (the ’789 patent) and 7,187,389 (the ’389 patent) are drawn to patent-ineligible subject matter under 35 U.S.C. § 101. Notably, the Court in this case affirmed the district court’s judgment and dismissal of the claims, notwithstanding that IBM’s Amended Complaint was accompanied by an expert declaration purporting to explain why the patents claimed eligible subject matter. The same panel of judges—Judges Reyna, Hughes, and Stoll—also considered § 101 patentability issues last week in Weisner v. Google LLC, our write-up of which is available here.
In this case, the asserted patents were directed to methods and systems of displaying and interacting with data on computerized maps. Specifically, the ’789 patent claimed methods and systems for updating and synchronizing information displayed on a map and an associated list of displayed elements, based on a user’s drawing a shape on the map to select certain elements and de-select others. The ’389 patent claimed methods and systems for displaying “layered” data on a map, with the layering order determined by non-spatial element attributes, such as color and shape. The district court found that both patents’ claims were directed to abstract ideas concerning the organization and display of information on maps; that their methods could be performed using transparency overlays and other materials with conventional paper maps; and that the claims contained no inventive concept beyond “apply it on a computer.” The Federal Circuit agreed.
The Court found that the ’789 patent claimed only the “abstract steps” of “presenting a map, having a user select a portion of that map, and then synchronizing the map and its corresponding list to display a more limited data set to the user.” The Court noted it had repeatedly held that claims “directed to collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner” (In re Killian, 45 F.4th 1373, 1380 (Fed. Cir. 2022)) are directed to abstract ideas. The Court also agreed with the district court that the ’789 patent’s claims were “result-oriented, describing required functions (presenting, receiving, selecting, synchronizing), without explaining how to accomplish any of the tasks,” which further supported the conclusion that they were directed to an abstract idea. At step two of the eligibility test articulated in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Court rejected IBM’s argument that the district court was required to accept as true IBM’s factual allegations that the claims disclosed an inventive concept, noting that it was not required to accept conclusory allegations. Instead, the Court found that IBM’s cited “synchronizing” and “user determined shape” limitations simply described the abstract method, which was insufficient to transform it into patent-eligible subject matter.
Similarly, the Federal Circuit found that the ’389 patent claims “merely organize and arrange sets of visual information into layers and then present said layers on a generic display device. While the claimed methods may speed up that organizational process by using a computer, they do not recite an improvement in any computing technology.” The Court analogized the claimed methods to conventional organizational methods that might be employed “when looking at a particularly cluttered paper map.” The Court rejected IBM’s argument that the claims were analogous to those held patent-eligible in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), which concerned an improved display interface for working with information displayed on the small screens of mobile devices, distinguishing Core Wireless on the basis that the ’389 patent claims were more broadly drafted and not limited to any particular type of display or device. The Court went on to find that the claims’ recitation of generic computer components for performing the abstract steps (e.g., “logic for selecting one or more objects to be displayed in a plurality of layers”) was “simply not enough” to disclose an inventive concept under Alice step two.
Accordingly, the Federal Circuit affirmed the district court’s determination that the patents were directed to ineligible subject matter. Judge Stoll dissented in part, agreeing with the majority as to the ’789 patent and several of the ’389 patent’s claims, but arguing that additional limitations in dependent claims 9 and 13 of the ’389 patent, together with the factual allegations of IBM’s complaint and expert declaration, precluded dismissal at the pleadings stage.
The opinion can be found here.
ALSO THIS WEEK
Nature Simulation Systems Inc. v. Autodesk, Inc., Appeal No. 2020-2257 (Fed. Cir. Jan. 27, 2022; reissued Oct. 17, 2022)
This week, a panel of the Federal Circuit reissued its January 27, 2022 opinion in Nature Simulation Systems Inc. v. Autodesk, Inc. regarding the standard for claim indefiniteness, following a petition for rehearing filed by appellee Autodesk. Our write-up of the January 27 opinion can be found here. In the January 27 opinion, despite patent indefiniteness being a question of law and reviewed de novo, the Federal Circuit appeared to give substantial deference to the actions of the patent examiner during prosecution. The January 27 opinion relied in part on clarity the majority found in the specification and prosecution history, and in part on the patent examiner’s analysis, stating that “[a]ctions by PTO examiners are entitled to appropriate deference,” and finding it relevant that the claims at issue “were held by the examiner” to be definite. The October 17 modified opinion still reversed the district court’s holding of invalidity, but removed all deference to the patent examiner, and instead further emphasized that the requisite definiteness was found in the specification and prosecution history. The January 27 opinion contained a lengthy dissent by Judge Dyk. The modified opinion did not convince Judge Dyk, who still found nothing in the specification or prosecution history to clarify the meaning of the claim language at issue.
The full text of the reissued opinion can be found here.
By Tyler Hall
This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.
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