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Judge Andrews Finds Online Learning Patent Claims Ineligible Subject Matter under Section 101

At the summary judgment stage of an ongoing patent infringement action, Judge Richard G. Andrews has found a patent related to “a computer-aided learning system” invalid under 35 U.S.C. § 101 for claiming ineligible subject matter. The patent at issue, U.S. Patent No. 6,688,888, as described in its abstract and quoted by Judge Andrews, covered:

A computer-aided learning method and apparatus based on a super-recommendation generator, which is configured to assess a user’s or a student’s understanding in a subject, reward the user who has reached one or more milestones in the subject, further the user’s understanding in the subject through relationship learning, reinforce the user’s understanding in the subject through reviews, and restrict the user from enjoying entertainment materials under certain condition, with the entertainment materials requiring a device to fulfill its entertainment purpose. The generator does not have to be configured to perform all of the above functions.

IpLearn, LLC v. K12 Inc., C.A. No. 11-1026-RGA, Memo. Op. at 3 (D. Del. Dec. 17, 2014).

Judge Andrews explained that the novelty of the invention at issue was the use of computers. Examining the patent specification, His Honor observed: “Three things are noteworthy about this passage. First, the educational practices were described as being ‘decades’ old. Second, the educational testing practices that the inventors considered to be desirable were all well-known, as evidenced by the inventors’ description of the undesirable practices as being ‘typical’ and ‘usual.’ Implicit in the inventors’ recitation is that the better practices were known, but rarely used. Third, the solution is described as ‘[add] computers.’” Id. at 9.

Judge Andrews first found that the patent claims were directed to the abstract idea of “instruction, evaluation, and review.” Id. at 9-12. The asserted claims, he observed, “follow several steps directed at the abstract idea of instruction, evaluation, and review. More specifically, the steps are an abstraction, addressed to fundamental human behavior related to instruction, which is apparent when the steps are summarized without their generic references to computers and networks: 1) accessing a learner’s test results, 2) analyzing those test results, 3) providing guidance on weaknesses, 4) generating a report on two or more subjects to be shared with others, 5) considering the learner’s preferences, 6) allowing access to areas of a subject on the Internet, 7) providing an identifier for a learner, 8) storing the learner’s materials, and 9) allowing a search of those materials. None of these steps taken individually, or taken collectively, is sufficiently concrete. As a whole, they represent an abstract idea of conventional everyday teaching that happens in schools across the country. While there are limitations, they do not save the claims from being directed at an abstract idea.” Id. at 11. Judge Andrews continued: “the ‘888 patent’s Background section begins, ‘[t]he present invention relates generally to learning and more particularly to using a computer to enhance learning.’ Such subject matter seems precisely the building blocks of ingenuity the Supreme Court in Alice Corp. was so concerned about inhibiting. Instructing students, evaluating those students, and providing methods to review their progress are concepts that have probably existed as long as there has been formal education.” Id. at 11 (internal citations omitted).

Judge Andrews then turned to whether the “method outlined in the patent is sufficiently transformative of the abstract idea to make it patent eligible.” Id. at 11-14. Although the asserted claims did contain limitations, Judge Andrews found that “none are sufficient to ensure that the claims amount to ‘significantly more’ than patenting the abstract idea of instruction, evaluation, and review. Nor do they possess inventive concepts to transform the abstract idea.” For example, “[g]enerating learning materials, allowing diagnostic testing, and allowing a learner to search an area for material on the learner’s weaknesses are not meaningful limitations.” Id. at 12.

Judge Andrews used the following hypothetical to illustrate his point:

An elementary student is taught multiplication tables. She takes a test, and her results are graded (or “accessed”) by her teacher. The teacher analyzes the student’s test results against a grading rubric to determine the student’s weaknesses. The teacher provides guidance to the student about her weaknesses. The teacher puts together a progress report on the student’s multiplication tables, highlighting the student’s most recent test, perhaps identifying weaknesses with multiples of 6 and 11. This progress report is shared with others, perhaps in a parent-teacher conference. The teacher takes into consideration the student’s preference for math games over timed pop quizzes. The student is allowed to access flash cards (“materials”) on her weak multiples, which are kept in a file cabinet in her classroom. Using the student’s first and last name as an identifier, the teacher stores the student’s materials in a file. Her parents can also request to see her file by telling the teacher her name. This is the kind of hypothetical that could happen every day in elementary schools in this country. Allowing the claims at issue would simply inhibit fundamental educational instruction and the building blocks of human ingenuity. The fact that computers, networks, the Internet, computer readable medium, or computer program code figure into [the] claims . . . and the dependent claims, does not save them. . . . As a thought experiment, if these generic terms are excised, the claims preempt the most fundamental aspects of educational instruction with teachers and testing.

Id. at 13.

Judge Andrews also provided a few interesting indications of what information he found useful to his section 101 analysis, noting that it “is clear that a number of district courts are grappling with section 101 issues after Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). With the exception of Ultramercial, Inc. v. Hulu, LLC, 2014 WL 5904902 (Fed. Cir. Nov. 14, 2014), however, the Court found most of this additional authority [from district courts and the Federal Circuit] not entirely relevant or on-point.” Id. at 2 n.1.

Judge Andrews also noted: “In a recent concurrence [in Ultramercial], Judge Mayer wrote that section 101 eligibility is a ‘threshold question,’ ‘the primal inquiry, one that must be addressed at the outset of litigation,’ explaining that the determination ‘bears some of the hallmarks of a jurisdictional inquiry.’ The Court is not certain whether Judge Mayer’s opinion is a correct statement of the law for all cases but believes it is instructive in this case. IpLearn has asserted that K12 must provide evidence to support the contention that the claims at issue are abstract ideas. Because section 101 determinations are questions of law, and a threshold inquiry, and because every judge and lawyer has firsthand experience with instructional methods, this Court does not believe it necessary that K12 proffer evidence that the type of instruction and testing outlined in the claims is time-honored.” Id. at 8 n.6 (citations omitted).

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