A Computer Method Claim Must Improve the Functions of the Computer to Survive § 101
In International Business Machines Corp. v. Zillow Group, Inc., Appeal No. 21-2350, the Federal Circuit held that a patentee’s allegation that computer method claims made data analysis more efficient, without reference to the function or operation of the computer itself, was not sufficient to overcome a challenge under 35 U.S.C. § 101.
International Business Machines (“IBM”) sued Zillow for infringement of several patents directed to the graphic display of data on a computer. Zillow moved for judgment on the pleadings, arguing that several of the asserted patents were directed at ineligible subject matter under 35 U.S.C. § 101. The district court granted Zillow’s motion as to two patents, finding the patents ineligible. After applying the two-step framework in Alice, the district court found the patents were “directed to abstract ideas, contain no inventive concept, and fail to recite patentable subject matter.” IBM appealed.
On appeal, IBM argued that the district court erred in finding that the claims lacked an inventive concept under the second step of the Alice framework. IBM pointed to an expert declaration stating that the claimed method allowed for better visualization of data, which in turn resulted in more efficient data analysis. The Federal Circuit disagreed, finding that any improved efficiency came from the mere application of an abstract idea rather than an improvement to the functions of the computer itself, as the claims could be performed by hand and would yield the same improved efficiency. Accordingly, the Federal Circuit affirmed the district court’s finding that the two patents were ineligible under 35 U.S.C. § 101.
Judge Stoll dissented in part, arguing that IBM had adequately alleged that two of the claims were patent eligible. Judge Stoll reasoned that the claims addressed physical limitations with computer displays wherein large datasets would be “densely packed” and rendered “incomprehensible.”
Expert’s Unanswered Questions Do Not Make Claims Indefinite
Nature Simulation Systems Inc. v. Autodesk, Inc., Appeal No. 20-2257, the Federal Circuit held that “unanswered questions” raised about asserted claim terms did not render asserted claims indefinite, in light of the specification, prosecution history, and other relevant evidence.
Nature Simulation Systems brought suit against Autodesk in the Northern District of California for infringement of two patents. The district court held the claims at issue invalid on the ground of indefiniteness. The district court recited several “unanswered questions” that Autodesk’s expert raised about terms in the asserted claims. It explained that, even if the questions were answered in the specification, the definiteness requirement was not met because the questions were not answered in the claims. Nature Simulation Systems appealed.
The Federal Circuit reversed. It reiterated that claims are to be read and understood in light of the specification, the prosecution history, and other relevant evidence. The court explained that claims define the metes and bounds of the invention, but they are not intended to repeat the detailed explanations contained in the specification. Here, the Court stated that the specification described relevant prior art that gave clarity to the claim language. The Federal Circuit also noted that the district court gave no weight to prosecution history showing resolution of an earlier indefiniteness rejection.
Judge Dyk dissented. He argued that the asserted claims should be held invalid as indefinite. Judge Dyk reasoned that the district court properly applied the standard set forth in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), by reading the patent’s claims in light of the specification and prosecution history to determine whether the claims would inform those skilled in the art about the scope of the invention with reasonable certainty. According to Judge Dyk, there was nothing in the record to suggest someone of skill in the art would have understood the language at issue.
Seeing Clearly: An Ordinary Observer Must Look Through the Lens of the Prior Art
In ABC Corporation I v. The Partnership and Unincorporated Associations, Appeal No. 22-1071, the Federal Circuit held that time’s up! The hourglass shape that is the dominant feature in both the asserted design patents and accused hoverboard products does not support a preliminary injunction because it was in the prior art.
Hangzhou Chic Intelligent Technology Co., Ltd. and Unicorn Global, Inc. (“plaintiffs”) sued several sellers of Gyroor-branded hoverboards (“defendants”) for infringement of four design patents and moved for a preliminary injunction. Plaintiffs asserted that the accused hoverboards infringed the patented designs because they all had an integrated “hourglass” body shape. Defendants argued that the plaintiffs’ infringement analysis failed to account for a prior art reference that included an hourglass shape for a hoverboard. The district court granted the preliminary injunction, finding that the plaintiffs had shown a likelihood of success on the merits because a trial would likely be required to resolve the infringement dispute and the accused products were not “sufficiently dissimilar” or “plainly dissimilar” from the patented design.
The Federal Circuit reversed, holding that the district court erred in finding a likelihood of success on the merits for four independent reasons. First, the Federal Circuit held the court applied the wrong legal standard, and that an injunction cannot be granted merely because a trial is required to establish dissimilarity. Second, the Federal Circuit held the court erred by not conducting the ordinary observer analysis through the lens of the prior art. Applying Egyptian Goddess, the Federal Circuit held that where a dominant feature of the patent design and the accused products—here an hourglass shape—appears in the prior art, the infringement analysis should be based on other features of the design. Third, the Federal Circuit held the court erred because the products all differed, and the court did not carry out a product-by-product analysis. Fourth, the Federal Circuit held the preliminary injunction was overbroad because it generally enjoined any future product and not just the products found likely to infringe and products only colorably different from the products found likely to infringe.