In contrast to claims that are directed to “nothing more than the performance of an abstract business practice on the Internet or using a conventional computer,” claims that are “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” are patent-eligible. Here, for example, a method of generating composite web pages designed to retain visitor traffic was found to be patent-eligible because it specified how interactions with the Internet were manipulated to address problems arising with conventional computer networks themselves, where visitors can be more easily led away from a host website than from, say, a pre-Internet brick-and-mortar store. “Although the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet.” It may therefore be best to craft specifications and patent-eligibility arguments for Internet-based business methods around solving Internet-centric challenges that arise due to problems with conventional computer networks themselves.
Background / Facts: The patents being asserted here are directed to generating composite web pages that combine certain visual elements of a “host” website with content of a third-party merchant. The common specification explains that prior art systems allowed third-party merchants to “lure the [host website’s] visitor traffic away” from the host website because visitors would be taken to the third-party merchant’s website when they clicked on the merchant’s advertisement on the host site. The patents-in-suit disclose a system that provides a solution to this problem (for the host) by creating a new web page that permits a website visitor, in a sense, to be in two places at the same time, thereby retaining visitor traffic.
Issue(s): Whether claims that address a business challenge that is particular to the Internet (retaining website visitors) can be patent-eligible under 35 U.S.C. § 101.
Holding(s): Yes. “As an initial matter, it is true that the claims here are similar to the claims in the cases [recently found to be patent-ineligible] in the sense that the claims involve both a computer and the Internet. But these claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The court was quick to caution, however, that “not all claims purporting to address Internet-centric challenges are eligible for patent.” For example, in the majority’s view, the claims here “are different enough in substance from those in [the recent decision] Ultramercial because they do not broadly and generically claim ‘use of the Internet’ to perform an abstract business practice (with insignificant added activity). Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result—a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.“