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October 27, 2022

Does Not Compute: Faster Processes Aren't Enough for Subject Matter Eligibility

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In yet another opinion addressing subject matter eligibility and application of the Supreme Court's Alice decision, the US Court of Appeals for the Federal Circuit found claims directed to graphical displays and user interfaces subject matter ineligible as directed 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 sued Zillow for allegedly infringing several patents related to graphical display technology. The district court granted Zillow's motion for judgment on the pleadings that sought a ruling that two of the asserted patents claimed patent-ineligible subject matter under 35 U.S.C. § 101. IBM appealed.

On appeal, the Federal Circuit applied the Alice two-step analysis to determine whether the claims at issue were directed to a patent-ineligible concept, such as an abstract idea, and if so, whether additional claim elements (considering each element both individually and as an ordered combination) transformed the nature of the claim into a patent-eligible application. As discussed in the Supreme Court Alice and Mayo decisions, the second step is "a search for an ‘inventive concept'—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'"

The representative claim of the first patent was directed to a method for coordinated geospatial and list-based mapping, and the method steps recited viewing elements having "geospatial characteristics" in a given viewing area of a map space and displaying a list of the elements in that space. The user then draws a selected area within the map space, having elements that may be inside or outside of the selected area. The elements having the geospatial characteristics within the selection area are selected and those outside the selected area are deselected. The map display and the list are then synchronized and concurrently updated to reflect what has been selected and deselected.

The district court concluded that "the patent was directed to the abstract idea of responding to a user's selection of a portion of a displayed map by simultaneously updating the map and a co-displayed list of items on the map," reasoning that the claimed method could be performed manually, for example, by putting a transparent overlay on a printed map, drawing on it with a marker, and then blocking off the "unselected area" of the map and corresponding list items with opaque paper cut to appropriate sizes. To choose a different "selection area," the user would erase the prior markings, remove the paper and start over. The district court noted that "alterations to hardcopy materials were made or auditioned in this manner" long before computers, and concluded that "[t]he [] patent merely contemplates automation using a computer."

The Federal Circuit agreed that the claims failed to recite any inventive technology for improving computers as tools and were instead directed to an abstract idea for which computers were invoked merely to limit and coordinate the display of information based on a user selection. IBM argued that the patent was directed to "specific asserted improvement[s] in computer capabilities" of "an improved [graphical user interface] for displaying, filtering, and interacting with geospatial data on a map and list display," which improves "the ability of users to identify and analyze relevant data in otherwise large data sets."

The Federal Circuit disagreed, citing prior § 101 cases such as Elec. Power Grp. v. Alstom (2016), In re Killian (2022) and Intell. Ventures I v. Cap One Fin. (2017), for the proposition that identifying, analyzing and presenting certain data to a user is not an improvement specific to computing, and that by itself, selecting and manipulating information "to provide a ‘humanly comprehensible' amount of information useful for users" doesn't transform otherwise abstract processes of information collection and analysis. The Court found that the claims at issue recited similarly abstract steps on a generic computer network operating in its normally expected manner: 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. While using a computer to "concurrently update" the map and the list may speed up the process, mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.

The Federal Circuit also agreed with the district court that the patent "is result-oriented, describing required functions (presenting, receiving, selecting, synchronizing), without explaining how to accomplish any of the tasks," and thus "does not sufficiently describe how to achieve these results in a non-abstract way."

Under Alice step two, the district court had concluded that the patent's inventive concepts were "just restatements of the abstract goals of the invention," "do not teach how the input is received or the map and list displays are synchronized," and "require[] nothing more than generic computer technology." IBM argued that the district court erred because, under Aatrix Software v. Green Shades Software (2017), "if there are allegations that the features of a patent are inventive, the District Court must accept that on a Rule 12 motion and cannot weigh the evidence or make credibility determinations." IBM also argued that at least the synchronized displays and the "user determined shape" limitations provided inventive concepts sufficient to pass muster under step two.

However, the Federal Circuit explained that the district court need not accept a patent owner's conclusory allegations of inventiveness and that Aatrix does not mean that "any allegation about inventiveness, wholly divorced from the claims or the specification, defeats a motion to dismiss." As the Court cautioned, conclusory statements are ignored when evaluating a complaint under Rule 12(b)(6) and only "plausible and specific factual allegations that aspects of the claims are inventive are sufficient." The Court contrasted this case to Cellspin Soft v. FitBit (2019), where the patentee overcame a motion to dismiss by identifying "several ways in which its application of capturing, transferring and publishing data was unconventional" and explained "how its invention was implemented using an unconventional hardware and software structure with novel data transmittance that improved upon the prior art." By contrast, the Court found that IBM had not made plausible and specific allegations that any aspect of the claims was inventive and that the cited "synchronizing" and "user determined shape" limitations used functional language, at a high level of generality and divorced from any computer technology, to recite the claimed functions of the abstract method without providing more.

The other representative claim on appeal a method of displaying layered data, in which objects to be displayed in a plurality of layers are selected and then identifying a plurality of non-spatially distinguishable display attributes, at least one of which corresponds to each of the layers.  Objects are then matched to a layer applying the non-spatially distinguishable display attributes corresponding to the layer.  The method then proceeds to determine a layer order that in turn determines a display emphasis corresponding to the objects in the various layers.  Then the objects are displayed in a way that the objects in each layer may be distinguished from each other based upon the non-spatially distinguishable display attributes of the first layer.

IBM argued that the district court erred by oversimplifying the patent and "drawing inaccurate analogies to manual methods," and that the patent "disclose[s] improvements to the field of [graphical user interfaces] for managing networked objects using layered and nonspatial characteristics."

The Federal Circuit agreed with the district court that the claim was directed to the abstract idea of organizing and displaying visual information. The Court did not find an Enfish-like "specific improvement to the way computers [or other technologies] operate" sufficient to save the claims from being directed to an abstract idea and saw the representative claims as merely organizing and arranging sets of visual information into layers and then presenting the layers on a generic display device. Again, the Court recognized that while the claimed methods may speed up the organizational process by using a computer, they "do not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem." Instead the claimed methods merely "recite a purportedly new arrangement of generic information that assists [users] in processing information more quickly."

IBM argued parallels between the claimed invention as being "directed to particular or specific implementations of presenting information in electronic devices," and the invention at issue in Core Wireless v. LG Electr. (2018) insisted that the claims in issue were directed to "an improved user interface for computing devices." However, the Federal Circuit found that the representative claim was "much broader" than the claim at issue in Core Wireless. The Court found that the representative claim was not limited to computer screens or any device at all and only recited a method (selecting, organizing and displaying visual information based on non-spatial attributes) that had long been used by cartographers creating paper maps. The Court did not find any discussion in the specification about improvements to specific types of device screens, only generic displays and computer systems.

The Federal Circuit also agreed with the district court's Alice step two analysis that the patent contained no inventive concept because it was not directed to a computer-specific problem 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.

IBM argued that the patent's inventiveness came from "the improvements of the way a computer displays information (not necessarily the type of information) to a user," specifically in using "nonspatial display attributes" (i.e., color, lines), "emphasized layers," "re-layering" and "rematching" elements. IBM also argued that neither "distinguishing data in a nonspatial manner" nor emphasizing and re-layering data to bring forth the most salient information, were "purely conventional." To the contrary IBM asserted that "dynamically altering visual characteristics to improve salience and reduce the effect of a cluttered [computer] screen" was inventive because (quoting its expert's declaration) "re-layering allows ‘users to dynamically manipulate the visualization to better their ability to scrutinize and review the data' and emphasizes objects of interest in a small, cluttered display," and rematching objects to specific layers "increases the efficiency of visually analyzing data because objects can be iteratively added to a ‘hot list' for ‘special scrutiny' without starting the method over."

Unpersuaded, the Federal Circuit saw no inventive concept in the claimed display method because the dynamic re-layering or rematching could also be performed (albeit more slowly) by hand by shuffling paper layers or erasing and redrawing objects on new layers. The Court regarded any improved efficiency stemmed from applying the claimed abstract idea to a computer display (and not improving the computer itself).

Judge Stoll agreed with the majority that the district court properly entered judgment holding several of the representative claims subject matter ineligible under § 101. However, she disagreed with the majority in terms of some narrower claims where she felt the complaint and attached IBM expert declaration provided plausible factual allegations that, when accepted as true, together with all reasonable inferences, stated a plausible basis for eligibility.

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