In International Business Machines Corporation v. The Priceline Group, et al., C.A. No. 15-137-LPS-CJB (D. Del. Feb. 16, 2016), Judge Christopher J. Burke recommended that Defendants’ motion to dismiss due to lack of patent-eligible subject matter be denied. Defendants argued the asserted claims were directed to patent-ineligible abstract ideas.
The Court examined the subject matter eligibility of each of the four patents-in-suit in turn. The Court concluded that the first patent was not directed to an abstract idea. “Defendants contend that the claims of the ‘601 patent “attempt to monopolize an abstract idea[,]” which they articulate as “keeping track of prior communications during a conversation between computers.”” Id. at 14. But the Court agreed “with Plaintiff that Defendants’ articulation does not capture the true character of the ‘601 patent’s invention,” Id. at 14. One issue with Defendants’ position was that they focused “not on the words of the patent; instead, Defendants focused largely on allegations in Plaintiffs Complaint” in a way that improperly broadened what the idea of the patent’s claims were. Id. at 14. “The ‘innovation over the prior art’ described in the patent’s specification . . . is not simply ‘keeping track of prior communications during a conversation between computers.’ Instead, it is to a new way of accomplishing that-an assertedly better method than existed in the prior art.” Id at 16 (emphasis in original). “In sum, the heart of the invention is more particular than simply ‘keeping track of communications’ amongst computers-it is the specific concept of recursively embedding state in continuations, in order to keep track of that content. By oversimplifying (and thus misidentifying) the basic character [the] patent, Defendants have failed to meet their burden of demonstrating that the claim is directed to an abstract idea.” Id. at 20.
The Court recommended denial of the motion without prejudice with respect to this patent on the grounds that it was premature, rather than conclude the patent could not be drawn to an abstract idea as a matter of law, explaining that the Court had relied on Plaintiff’s proposed claim construction in its analysis and that those constructions could end up being disputed and not adopted. Id. at 21.
Even though it was unnecessary to consider the second prong of Alice, the Court then did so “for the sake of completeness,” and concluded that “it is plausible that the ‘recursively embedding’ limitation amounts to a concrete application of the asserted abstract idea. A morenrobust record would also be needed on the subjects of preemption and innovation, which could impact the subject matter eligibility of the claim.” Id. at 22-23.
The second patent “describe[d] an invention meant to improve upon then-current single-sign-on (‘SSO’) technology.” Id. at 30. The Court concluded that the patent was not directed to an abstract idea, again concluding that Defendants’ articulation of what the patent covered was overbroad. And, again, the Court recommended denial without prejudice and then engaged in Alice’s second step for the sake of completeness, agreeing that “it is plausible that the claim contains an inventive concept sufficient to withstand Defendants’ Motion.” Id. at 38-39.
The third and fourth patents, which are related with similar specifications and were considered together, are directed at “enabl[ing] a user to navigate easily through multiple applications in an interactive service” and “provid[ing] a method for presenting relevant advertising to a user of an interactive service without distracting the user or disrupting the user’s session.” Id. at 45-46. Here, the Court concluded that “[t]he heart of these inventions are as Defendants have described them-generating partitioned screen displays for users from information stored at the user’s computer.” Id. at 48. And the Court agreed with Defendants that these patents were directed at abstract ideas: “the concepts of locally storing information and resources at a user’s computer and presenting a partitioned display are abstractions ‘devoid of a concrete or tangible application.’ People have been locally storing information and presenting displays of information with or without computer-based help for years. (See, e.g., D.I. 19 at 21 (Defendants describing an individual creating a copy of a document that is also stored in a file room to avoid having to visit the file room each time she needs to use the document)). These concepts are comparable to other similar concepts that have been deemed to be abstract in recent cases.” Id. at 48 (citations omitted). However, the Court then concluded that Defendants had not met their burden of demonstrating that these patents were devoid of inventive concepts under Alice’s second prong.
Accordingly, the Court recommended denial of the motion as to all four patents-in-suit.
UPDATE: On March 30, 2016, Chief Judge Leonard P. Stark adopted Judge Burke’s Report and Recommendation in full.