If you are looking for language to support an assertion that a computer-implemented invention is patent eligible, this is a good case to consult. The court emphasized, for example, that the claims did not cover the use of advertising as currency “disassociated with any specific application of that activity,” and that it is in error “to strip away these limitations and instead imagine some ‘core’ of the invention.” There is also good language to help traverse objections to functional claiming for computer-implemented inventions: “a programmed computer contains circuitry unique to that computer. That ‘new machine’ could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function.” It did feel, though, as if C.J. Raider was forging his own path somewhat while veering away from the Supreme Court’s most recent guidance, and this was the main complaint in the concurring opinion by J. Lourie. It still remains to be seen how this will ultimately come out in the wake of CLS Bank.
Background / Facts: This is our first look at the patent eligibility of computer-implemented inventions in a post-CLS Bank world. The patent here is directed to a method for distributing copyrighted products (e.g., songs, movies, books) over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content. The parties agree that the mere idea that advertising can be used as a form of currency is abstract. However, the claims recite several more specific steps, such as “providing said media products for sale on an Internet website.”
Issue(s): Whether the claims are meaningfully limited to something less than the abstract idea itself that advertising can be used as a form of currency, such that the claim does not wholly pre-empt use of this concept.
Holding(s): Yes. After a 25 page discussion framing the state of computer-related subject matter eligibility in a fairly inclusive light, the court (specifically, a panel headed by C.J. Rader) held that as a practical application of the general concept of advertising as currency and an improvement to prior art technology, the claimed invention is “not so manifestly abstract as to override the statutory language of section 101.” In essence, the court attempted to summarize the inquiry as “whether the claims tie the otherwise abstract idea to a specific way of doing something with a computer, or a specific computer for doing something; if so, they likely will be patent eligible.” On the other hand, “claims directed to nothing more than the idea of doing that thing on a computer are likely to face larger problems.” Here, “[v]iewing the subject matter as a whole, the invention involves an extensive computer interface. … Likewise, it does not say ‘sell advertising using a computer,’ and so there is no risk of preempting all forms of advertising, let alone advertising on the Internet. Further, the record at this stage shows no evidence that the recited steps are all token pre- or post-solution steps. Finally, the claim appears far from over generalized, with eleven separate and specific steps with many limitations and sub-steps in each category.” Drawing heavily on In re Alappat, the court seemed additionally swayed by the fact that “many of these steps require intricate and complex computer programming.”