Sep 9, 2024

Combining Abstract Ideas Does Not Make Them Less Abstract

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Written by: Jacob J. Golan, Ph.D. & Douglas B. Wentzel

Before Dyk, Reyna, and Stark. Appeal from the United States District Court for the Western District of Texas.

Summary: When assessing patent eligibility under 35 U.S.C. § 101, combining two abstract ideas does not make either less abstract, and conventionality can be analyzed at both steps of the Alice test.

Broadband iTV, Inc. sued Amazon.com and related entities (Amazon), alleging infringement of five patents. Amazon moved for summary judgment that Broadband’s patents claimed patent-ineligible subject matter. The district court granted Amazon’s motion, finding that Broadband’s patents claimed patent-ineligible subject matter and were therefore invalid under § 101. Broadband appealed.

The Federal Circuit affirmed. Applying step one of Alice, the Federal Circuit found that the claims of four asserted patents were directed to the abstract idea of receiving metadata and organizing the display of video content based on that metadata. The court agreed with the district court that combining two abstract ideas does not render either less abstract. For the fifth patent, the Federal Circuit found the claims were directed to the abstract idea of collecting and using viewing history to recommend categories of video content. The court distinguished Core Wireless and Data Engine, where the claims were not abstract because they were directed to a technological solution (an improved structure or function) to a known technological problem. In contrast, the Federal Circuit found that Broadband’s claims were not directed to any specific technological solution. Applying step two of Alice, the Federal Circuit agreed with the district court that nothing in the claims transformed them into significantly more than the abstract ideas themselves.

The Federal Circuit also rejected Broadband’s argument that the district court erred by assessing the conventionality of the claimed inventions at both Alice steps. The court explained that it may be necessary to analyze conventionality at both Alice steps to determine whether a claim is directed to a longstanding or fundamental human practice (in step one) and what the patent states is the claimed advance over the prior art (in step two). As the Federal Circuit reiterated, “there is no bright line between the two steps.”

Editor: Sean Murray