The most recent 101 PTAB road kill is an Intellectual Ventures, LLC, patent on electronic content distribution – U.S. Patent No. 6,658,464 — in a CBM review of challenged claims 1, 8, 16, and 17 (reproduced below) brought by Motorola Mobility, LLC. As enumerated in greater detail below, the PTAB found the claims patent-ineligible under Section 101 as lacking in technological innovation and furthermore that the claimed subject matter does not “improve the functioning of the computer itself,” or “effect an improvement in any other technology or technical field,” as there is no recitation in the claims of improved computer technology or advanced programming techniques. (see PTAB decision, bottom of pgs. 43-44). In short, the PTAB found that “the steps of the challenged claims are well-known, conventional, and routine and do not transform a general purpose computer (user station comprised of a processor and storage device) into a specific machine. Rather, the claimed instructions are the normal basic functions of a computer.”
Q: What can we learn from this case? A: What we already knew — Section 101 eligibility analysis for software is so far off the rails and it no longer
The challenged claims are set forth below:
1. A software product for use at a user station, the user station including a processor and a storage device, the software product comprising computer executable instructions that, when executed by the processor:
enable a user at the user station to select content from each of a plurality of independent publishers;
effect transport of the selected content from each of the plurality of publishers to the user station over a communications network and, without user intervention, effect storage of the transported content to the storage device such that the content is retained on the storage device upon shutting down of the user station and/or deactivation of the software product; and
effect presentation of the stored content to the user at the user station with a user interface that is customized to the respective publishers.
8. The software product as set forth in claim 1, wherein the transport of the selected content to the user station is effected without user intervention.
16. The software product as set forth in claim 1, wherein the transport of the selected content to the user station is effected using a non-proprietary data transfer protocol.
17. The software product as set forth in claim 1, wherein the communications network is the Internet.
According to the PTAB, none of claims 1, 8, 16 or 17 constitute a “technical invention”:
“Claim 1 is directed to a software product that comprises instructions that select, transport, store, and display content. As is discussed in greater detail in the next section, the steps of claim 1 provide a very general description of how components carry out instructions. For example, the instructions are “executed” by the processor.
The method of claim 1 is analogous to claim 17 of Versata in that claim 1 is directed to a business process of distribution of electronic information products that includes minimal computer-related limitations. Likewise, the fact that the steps are accomplished via a general purpose computer (a user station, communication network, and user interface) does not change the character of the invention. Just as the patent at issue in Versata sought to reduce the need for large data tables, so too the patent at issue here sought to solve problems related to OSPs and M2M transfers. This did not transform claim 17 in Versata Development into a technological invention, nor does it do so for claim 1 here.
Accordingly, the ’464 patent does not solve a technical problem using a technical solution.”