Federal Circuit Affirms Eolas Patent Claims Invalid

The Federal Circuit affirmed a lower court ruling invalidating several claims in a computing patent that Eolas sought to assert against Amazon, Google, and Walmart.

The ’507 patent at issue claims priority from a patent filed in 1994. As Ars Technica explains, In 1993, Michael Doyle was the director of a computer lab at the University of California-San Francisco, where he oversaw the creation of a program that allowed doctors to view embryos online. He later claimed this was the first "interactive" use of the World Wide Web.

University lawyers helped Doyle patent his invention.

Doyle used the patent as the main asset for a company he called "Eolas," the Irish word for knowledge. Eolas launched a patent war against Microsoft and won a $540 million jury verdict. The case settled for more than $100 million, with one-third going to the University of California.

The ’507 patent specification notes that the limited processing power of a typical client computer and the low bandwidth of the Internet at the time prohibited most users from interacting with large data objects on the Internet.

The claimed invention takes advantage of distributed hypermedia environments, such as that provided by the World Wide Web, to harness the remote computing power made available by distributed computing.

A hypermedia document, as the court explained,

is a document presented to a user in a computer system in which “the user is able to click on images, sound icons, video icons, etc., that link to other objects of various media types, such as additional graphics, sound, video, text, or hypermedia or hypertext documents.”

As Ars Technica noted,

Under Doyle's conception of his own invention, practically any modern website owed him royalties. Playing a video online or rotating an image on a shopping website were "interactive" features that infringed his patents.

And unlike many "patent trolls" who simply settle for settlements just under the cost of litigation, Doyle's company had the chops, the lawyers, and the early filing date needed to extract tens of millions of dollars from the accused companies.

Tim Berners-Lee, a British scientist, invented the World Wide Web (WWW) in 1989 while working at the European Organization for Nuclear Research (CERN). The Web was originally intended to allow automated information sharing between scientists in universities and institutes around the world.

As Ars Technica reported, Berners-Lee himself testified in an Eolas patent case in Tyler, Texas, in 2012.

As the court described in the latest case,

The [patent] specification explains that tasks that would normally be resource or bandwidth-intensive for a single computer—such as rendering large images or calculating spreadsheet cells—can be performed more effectively with distributed computing. For example, a new viewpoint of a large image or an updated calculation for a large spreadsheet can be computed on a remote computer and then sent to the client computer for display.

Patent claim 32 recites:

A method, performed by a server computer connected to the World Wide Web distributed hypermedia network on the Internet, for disseminating interactive content via the World Wide Web distributed hypermedia network on the Internet, the method comprising:

A. receiving, by the server computer, a request for information; and
B. transferring, by the server computer, the information onto the World Wide Web distributed hypermedia network on the Internet…

The defendants argued that certain patent claims were patent-ineligible under 35 U.S.C. § 101, which states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

As the US Patent Office (USPTO) explains,

Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter) in Step 1 does not end the eligibility analysis, because claims directed to nothing more than abstract ideas (such as a mathematical formula or equation), natural phenomena, and laws of nature are not eligible for patent protection.

The district court concluded that under step one of the test set forth by the US Supreme Court in Alice Corp. v. CLS Bank International, the asserted claims are “directed to the abstract idea of enabling interactivity with remote objects on a client computer browser using distributed computing.”

The district court determined under step two of Alice

that the purported inventive concepts of distributed computing and improved security, whether individually or as an ordered combination, embodied the abstract idea, and thus could not transform the claim beyond the abstract idea as required to demonstrate eligibility under Alice step two.

The Federal Circuit noted that

for Alice step one, we must assess whether the claims at issue are directed to a patent-ineligible concept, namely a law of nature, natural phenomenon, or abstract idea. … If the answer is yes, we then consider the claim elements, both individually and as an ordered combination, to determine whether they contain an “inventive concept” sufficient to “‘transform the nature of the claim’ into a patent-eligible application.”

The court found that

Eolas’s claims are not directed to computers, networks, or interacting with content generally; rather, they recite interacting with content on the World Wide Web.

The Federal Circuit agreed with the district court that “the claims are directed to an abstract idea under Alice step one. Simply put, interacting with data objects on the World Wide Web is an abstraction.”

The court wasn’t persuaded by Eolas’s contention that it developed new functionality that was not previously available and thus its claims were eligible under § 101. Said the court, “an abstract idea that is new or groundbreaking is not any less abstract.”

The court noted that claims purporting to improve a technological process are not directed to an abstract idea under § 101. However, said the court,

whether analyzed as technological improvements under Alice step 1 or as inventive concepts under Alice step 2, none of Eolas’s three alleged concepts for representative claim 32 make the claim eligible.

Categories: Patents