Fed Circuit affirms IBM display patents as ‘abstract’
Alice test sinks IBM patents related to graphical displays | Decision “illustrates why patent eligibility should not be determined at the pleadings stage” | New York Intellectual Property Law Association| Zillow Group.
Two IBM patents relating to graphical display technology relate to abstract ideas and are not patentable, the US Court of Appeals for the Federal Circuit has ruled.
IBM sued Zillow Group for infringement of several patents relating to graphical display technology in 2019, and the district court concluded that two of the asserted patents claimed ineligible subject matter under 35 USC § 101.
On October 20, the court affirmed the district court’s decision, affirming that two of the patents focus on abstract ideas and lack an inventive concept.
A Zillow spokesperson said: “We are pleased with the court’s decision today agreeing with the dismissal of these claims. We will continue to vigorously defend ourselves against the claims remaining in these suits, which we believe are without merit.”
The court used the two-step framework established by the US Supreme Court in Alice v CLS Bank (2014) and Mayo (2012), to determine firstly whether the two patents related to ‘an unpatentable law of nature, natural phenomena, or abstract idea’.
If so, part two of the test considers whether the patents include an “inventive concept” sufficient to “‘transform the nature of the claim’ into a patent-eligible application.”
The court found that US patent number 9.158,789 (‘789), which described a method for “coordinated geospatial, list-based and filter-based selection”, related to an ineligible, abstract idea, and “did not disclose a technical improvement or otherwise suggest that one was achieved”.
The court also ruled that the claims failed step two.
US patent number 7,187,389 (‘389) concerned a method of “displaying objects in visually distinct layers”, which can be “brought to and emphasised at the top of the display while other layers are deemphasised”.
Here the appellate court affirmed that, in step one, the patent related to ‘the abstract idea of organising and displaying visual information’. At step two, the court ruled: “We see no inventive concept that transforms the abstract idea of organizing and displaying visual information into a patent-eligible application of that abstract idea.”
Judge Stoll dissent
But Circuit Judge Stoll dissented-in-part from the majority decision, arguing that she would reverse the district court’s judgment of patent ineligibility for claims 9 and 13 of the ’389 patent, because “the claimed re-layering and re-matching system recited in claims 9 and 13 is directed to a technical improvement in how a user interacts with a computer via the graphical user interface, not an abstract idea,” and that the majority view of claims 9 and 13 were “at too high a level of abstraction.”
She concluded that “the district court did not accept the complaint’s well-pled facts relevant to the eligibility inquiry as true. Instead, it wholesale ignored these factual allegations in holding claims 9 and 13 of the ’389 patent ineligible. This is legal error under our precedent, and we should reverse.”
Commenting on the case, Rob Rando, partner at Greenspoon Marder and President-Elect of the New York Intellectual Property Law Association (NYIPLA), said the Court of Appeal decision and the District Court opinion from which it was appealed, “continues to demonstrate the flawed analysis of abstract ideas in the Supreme Court Alice test and lower courts’ misguided application of the test at the pleadings stage”.
‘Degradation of US innovation’
“At a minimum, and as correctly pointed out by Judge Stoll in her dissent, invoking the CAFC precedent in Aatrix Software v Green Shades, Software, under a proper Rule 12 plausibility standard (Iqbal), the majority erred in affirming section 101 ineligibility of two dependent claims in one of the asserted patents,” said Rando.
He added: “However, and more to the broader point, the outcome in this case illustrates once again why patent eligibility should not be determined at the pleadings stage.
“Unfortunately, since the Supreme Court denied certiorari in American Axle, and until Congress can finally fix the section 101 patent eligibility crisis with Patent law reform—hope springs eternal with Senator Tillis’ proposed legislation, the Patent Eligibility Restoration Act of 2022, co-sponsored by Senator Coons—case decisions like this one will continue to issue, patentees will continue to lose valuable rights, and the US patent system itself will continue to suffer the degradation of US innovation.”
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox.
Today’s top stories
