In Videoshare, LLC v. Google, Inc., et al., C.A. No. 13-990-GMS (D. Del. Aug. 2, 2016), Judge Gregory M. Sleet granted Defendants’ Motion for Judgment on the Pleadings based on Section 101. The two patents-in-suit “describe a method and system for sharing streaming video over a network,” with one of the patents having an additional requirement of having an associated advertisement. Id. at 1-2. Defendants argued they were invalid “for claiming the patent-ineligible abstract idea of translating (converting) content and sharing the translated content (such as video segments), with or without accompanying advertisements.” Id. at 3 (internal quotation marks omitted).
Applying the Alice test and looking to recent Federal Circuit decisions for guidance, the Court found that Defendants had shown invalidity by clear and convincing evidence. Id. at 5. In terms of defining what the patents were directed to under step 1 of the Alice inquiry, the Court rejected Defendants’ articulation of above-quoted the abstract idea as too high a level of abstraction, but also rejected Plaintiff’s articulation of what the patents were directed to as “loaded with nearly every step or feature recited in the claims, thereby defeating the distillative purpose of the ‘directed to’ inquiry.” Id. at 9. Instead, the Court concluded, based in part on the patents’ specifications, that the patents were “directed to preparing a video in streaming video format for sharing over a computer network.” Id. This was an abstract idea because “the claims are not directed to an improvement in computer functionality, and the physical components of the claim merely provide a generic environment for carrying out the abstract idea.” Id. at 11. To that end, the Court was not persuaded that Plaintiff had invented anything that resulted in an improvement to computer functionality, for example, it had not invented “the technology that converts video files into streaming format.” Id. at 12. Furthermore, “[t]he ordered arrangement of such conventional features provides no discernable benefits to computer functionality. This stands in stark contrast to claims [in the recent Enfish and Bascom Federal Circuit decisions] which achieved such improvements to computing technology.” Id. at 13.
Turning to the second step of Alice, the Court concluded that the claims did not contain an inventive concept, as they recited computer capabilities that were routine and conventional. See id. at 17-18. In particular, the Court found these claims distinguishable from those in DDR Holdings that were “necessarily rooted in computer technology”: “[t]he instant claims require a series of conventional steps that could be done on a general purpose computer by a human to instead be done in an automated fashion on a receiving computer via the Internet. In this regard, manually following the claimed conventional steps does not lead to an unconventional result, and . . . automation of these conventional steps does not save the patents from ineligibility. In this way, unlike DDR Holdings, the instant claims do nothing more than conform to the routine and conventional.” Id. at 2.