September 23, 2016

Function Claim Language Shows That Claims are Directed to Abstract Idea, Not a Concrete Technical Innovation

By Bryan K. Wheelock, Principal

In Affinity Labs of Texas v. Amazon.com, Inc., [2015-2080] (September 23, 2016) the Federal Circuit affirmed judgment on the pleadings that U.S. Patent No. 8,688,085 on a System and Method to Communicate Targeted Information was directed to unpatentable subject matter.

The Federal Circuit found that the district court’s conclusion was consistent with its
approach to the “abstract idea” step in prior cases, including In re TLI Communications LLC Patent Litigation, which involved a patent on a method for uploading digital images from a cellular telephone to a server, which would then classify and store the images.  The Federal Circuit further found that the idea of the ‘085 patent was “even broader and more abstract” than the idea in Ultramercial, where a process of allowing a consumer to receive copyrighted media in exchange for watching a selected advertisement was found to be an abstract idea.

The Federal Circuit rejected the argument that ’085 patent embodied a concrete technological innovation, noting the purely functional nature of the claim, which confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.  The Federal Circuit said that claims thus do not go beyond stating the relevant functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.

The Federal Circuit concluded that, in sum, the ‘085 patent was not directed to the
solution of a “technological problem,” nor was it directed to an improvement in computer or network functionality.  It claims the general concept of streaming user-selected content to a portable device. The addition of basic user customization features to the interface did not alter the abstract nature of the claims and does not add an inventive component that renders the claims patentable.