Samba TV ad patent invalid under Alice, finds Fed Circ
A targeted TV ad patent owned by Samba TV is invalid according to the US Supreme Court’s landmark ruling in Alice v CLS Bank International (2014), the US Court of Appeals for the Federal Circuit has found.
The Federal Circuit handed down the decision yesterday, May 11, finding that the patent-in-suit related to an “abstract idea”. In doing so, it reversed an earlier decision delivered by a federal court in California.
Since the US Supreme Court’s decision in Alice, abstract patent ideas have been deemed unpatentable.
The dispute in this week’s case originated in November 2015, when Samba accused TV data company Alphonso of infringing US patent number 9,386,356 at the US District Court for the Eastern District of Texas.
The ‘356 patent, entitled “Targeting with television audience data across multiple screens” relates to a system providing a mobile phone user with targeted information (advertisements) deemed relevant to the user based on data gathered from their television.
After the case was transferred to the US District Court for the District of California, Alphonso filed a motion to dismiss on grounds that the asserted claims of the ’356 patent were patent-ineligible subject matter.
In December 2018, the district court denied the motion and ruled the ‘356 patent was valid as it was “not directed to patent-ineligible subject matter”.
A two-step process under Alice
Alphonso appealed the judgment, arguing that the district court erred in its conclusion.
The Federal Circuit found in favour of this argument on Tuesday, reaching its conclusion by engaging the two-step process established by the Supreme Court in Alice.
At Step 1, the Federal Circuit set out to determine “whether the claims at issue are directed to one of [the] patent-ineligible concepts,” ie, laws of nature, natural phenomena, or abstract ideas”.
Under Step 2, it examined whether “the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application”.
The California district court did not reach Step 2 in its 2018 ruling because it concluded that the claims were not directed to an abstract idea at Step 1.
In its argument against the appeal, Samba held that the patent’s claims are directed to a specific asserted improvement in computer capabilities, namely “television and mobile devices that operate with respect to each other differently from conventional televisions and mobile devices”.
It further asserted that its invention allowed devices on the same network to communicate where such devices were previously unable to do so.
Claims directed to abstract idea
However, the Federal Circuit found that patent’s claims only state that the mechanism used to achieve this communication is by piercing or otherwise overcoming a mobile device’s “security sandbox”, and that they “do not at all describe how that result is achieved”.
It added that the asserted claims failed to “recite an improvement in computer functionality”, and that even if the “claimed advance is in the ability to pierce the sandbox of a mobile device”, Samba had failed to show a result beyond the “mere use of a computer as a tool”.
The Federal Circuit further found that the patent’s alleged technological improvement does nothing more than help “achieve the abstract idea of providing targeted advertising to the mobile device user”.
It contended that the patent’s claims “merely improve” the abstract idea of targeted advertising.
“Because we find that Samba’s asserted claims are not directed to an improvement of a technology or creation of a new computer functionality, Samba’s asserted claims are directed to an abstract idea”, said the court.
The Federal Circuit concluded that under Alice, an abstract idea is not patentable if it does not provide an inventive solution to a problem in implementing the idea and that the ‘356 patent was invalid.
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