Judge Andrews recently issued a decision finding the claims of one of seven patents-in-suit ineligible under Section 101 as claiming an abstract idea. Sound View Innovations, LLC v. Facebook, Inc., C.A. No. 16-116-RGA, Memo. Op. at 1-2 (D. Del. Aug. 30, 2016). The patent-in-suit, U.S. Patent No. 8,095,593 claims a “method for managing electronic information” consisting of several steps. The Defendant contended that the claims were “directed to the abstract idea of managing information and preferences among members of a community,” which could be “performed mentally using pen and paper.” Id. at 7.
Judge Andrews explained that the “patent does not, as [Plaintiff] argues, provide ‘computer-specific solutions’” but rather “seeks to make a non-technological improvement to the non-technological problem of providing a user with information that is better suited to the user.” Id. at 8-9. Instead, the claims were “directed to the concept of offering more meaningful information to an individual based on his own preferences and the preferences of a group of people with whom he is in pre-defined relationships.” Id. at 10. Moreover, “[n]one of the claims offers a meaningful limitation beyond linking the abstract idea to generic or functionally-described computer components.” Id. at 10-14.
Judge Andrews also rejected the Defendant’s contention that he should consider the PTAB’s § 101 rejection during prosecution of a related application that included a claim that was substantially similar to a claim asserted in this case. Because the PTAB’s decision occurred before the Alice decision, however, Judge Andrews explained, “the PTAB decision has no relevance, even as persuasive authority, to the§ 101 motion under consideration.” Id. at 6-7.