Patent Riffs and Links for 11-3-17: Two-Way Media and Eligibility Update

Federal Circuit affirms Delaware Alice decision | WORLDIPREVIEW
“‘The claims contained no saving inventive concept because although they recited some computer components, they required only ordinary functionality of these components,’ said the Federal Circuit, explaining the lower court’s judgment.

In its appeal, Two-Way Media argued that the district court erred by oversimplifying the claims and ignoring claim limitations in the proposed constructions…But the Federal Circuit disagreed, finding that claim 1 of the ‘187 patent, which is representative of all the claims of the ‘187 and ‘005 patents, is directed to an abstract idea…On the second part of the Alice test, the court said that claim 1 “only uses generic functional language to achieve” the purported solutions…Two-May Media also argued that the court had erred in not including the proffered evidence…Again, the Federal Circuit disagreed with Two-Way Media…’We find no error in the district court’s determination to reject Two-Way Media’s proffered material, as the court correctly concluded that the material was relevant to a novelty and obviousness analysis, and not whether the claims were directed to eligible subject matter,’ said Reyna.”

Eligibilty: Novelty and Nonobviousness Evidence is Irrelevant to the Inventive Concept Question | PATENTLYO
“Note here that the court seemingly offered a road-map for the patentee — a technological arts test — noting that the specifications appear to describe a “system architecture as a technological innovation” but “the claim—as opposed to something purportedly described in the specification—is missing an inventive concept.””

Role of the Specification and Prosecution History in Patent Eligibility Analysis | PATENTLYO
Intra-circuit split? “The Federal Circuit’s decision in Two-Way Media is in some amount of tension with the court’s 2016 decision in Amdocs v. Openet Telecom. In Amdocs, the court noted that the claims appeared problematic under Section 101 (abstract ideas), but that the architecture – as specifically described in the specification but more generically claimed – showed that the invention was actually a technological improvement. In Two-Way Media, the court faced the same dilemma but arrived at the opposite conclusion — holding that although the specification described a technological improvement, the claims were written at too abstract a level to be patent eligible.”

Two-Way Media Ltd. v. Comcast Cable Communications, LLC (Fed. Cir. 2017) | PATENTDOCS.ORG
Versus Enfish… “Thus, one may refer to the specification in order to determine the improvements provided by the claims. In contrast, Two-Way Media asked the Court to look to the specification to further flesh out the details of the invention that were not actually claimed. This distinction should be appreciated before sounding the alarm regarding the Federal Circuit’s § 101 consistency (or lack thereof).

Having said that, the Federal Circuit certainly can be schizophrenic when applying § 101. Different panels have reviewed claims at different levels of detail under part one of Alice. These panels have also varied with respect to part two, with some looking to the specification for guidance while others mostly ignoring it.”

Surviving Alice: Sufficient Inventive Concept Must be in Claim, Not Specification | IPWATCHDOG
“While the specification may have described a possible innovative “scalable architecture” concept, representative Claim 1 of the ’187 patent did not. This lack of inventive concept in the claim itself could not be overcome and thereby precluded eligibility. Further, the Court found that Claim 1 did not require anything other than a conventional order of steps to be carried out on conventional computer and network components operating according to their ordinary functions. Therefore, there was no inventive concept present to transform the patents into an eligible application under § 101.”

Federal Circuit Endorses the Use of a Claim Preamble (Which Isn’t Even a Limitation, Right?) to Find the Claim Was Directed to an Abstract Idea | JDSUPRA
“The Federal Circuit disagreed with Two-Way Media argument that the district court erred by oversimplifying the claim and ignoring claim limitations present in its proposed constructions. The Federal Circuit said that the claims required the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but did not sufficiently describe how to achieve these results in a non-abstract way. The Federal Circuit further found Two-Way’s constructions merely propose the use of generic computer components to carry out the recited abstract idea.”

Del. District Court uses Alice Against Two-Way Media’s Monitoring Media Streams Patents in Suit against Comcast, Verizon | PATENTRIFF
Riff’s thoughts on the original District Court opinion (Aug 2016) – ”While the claims at issue in Two-Way certainly recite aspects of networks—arguably with improvements to the technology inherent in the methods—Judge Andrews appears to either (i) believe that “the claims do not specify a technological improvement to measuring information delivery using such a network” or (ii) adopt the defendants’ position that the networks are inherent in the very idea of monitoring transmitted information in any technological context.

Either way, it’s likely a position that is more comfortable to take after seeing the [CAFC] panels in Electric Power and TDI address claims involving the alleged goals of monitoring and analyzing data.”