When a district court judge states that "[o]ne could say this case is about a patent that claims too much and a legal test that provides too little," it is not hard to guess which way the case is going to go (the patent gets invalidated), based on what grounds (35 U.S.C. § 101).
Digital Media Technologies filed an infringement suit against Amazon in the Northern District of Florida, asserting U.S. Patent No. 8,964,764, entitled "Multimedia Network System with Content Importation, Content Exportation, and Integrated Content Management." Digital Media's activities were characterized by the Court as "[o]ther than owning and litigating the patent at issue, it is unclear what Plaintiff does."
Claim 1 of the '764 patent recites:
1. A multimedia system, comprising:
an external control server configured to:
receive a request from a client device via a wide area network requesting protected content to be sent to the client device;
receive client device authentication information from the client device, the client device authentication information comprising at least information related to a user authentication and a device authorization;
validate the client device authentication information according to predetermined criteria;
send protected content location information to the client device, the protected content location information being associated with a location of the protected content;
encrypt, in response to receiving a request for a content license from the client device via the wide area network, the request comprising information related to a location of the content license and being based on a determination by the client device that the protected content is encrypted and requires a content license, the content license using a public key associated with the client device, the content license comprising a content key which the client device uses to decrypt the protected content and usage parameters specifying the terms under which the protected content can be consumed; and
send the encrypted content license to the client device, the client device using a private key associated with the client device to decrypt the content license and using the content key to decrypt the protected content for use according to usage parameters specified by the content license;
and
an external content server configured to:
receive a request for the protected content from the client device, the request comprising the protected content location information provided by the external control server; and
send the protected content to the client device.
In short, the claim covers a subscriber to a digital video streaming or download service transmitting a request for video content, a server authenticating the request and transmitting a location of the video content and an encrypted license for the video content to the subscriber's device, the subscriber's device downloading the video content from the location and decrypting it with a key stored in the license. The subscriber can then watch the video content play out on the subscriber's device.
Amazon moved the Court to dismiss Digital Media's complaint for failure to state a claim. In doing so, Amazon contended that the patent was directed to "the abstract and ancient idea of limiting access to content to authorized users," and thus failed to meet the eligibility requirements of § 101.
The Supreme Court's Alice Corp. Pty. Ltd. v. CLS Bank Int'l case set forth a two-part test to determine whether claims are directed to patent-eligible subject matter. One must first determine whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further determine whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But generic computer implementation of an otherwise abstract process does not qualify as "significantly more." On the other hand, a claimed improvement to a computer or technological process is not abstract.
In applying part one of the Alice test to Digital Media's claims, the Court noted that "although the Supreme Court held that it 'need not labor to delimit the precise contours of the abstract ideas category' . . . it seems that such a delimitation would be useful." In particular the Court struggled with the level of abstraction at which to view the claims. The Court wrote:
From 30,000 feet up, one could say that Plaintiff's patent is directed to the abstract idea of secured content-delivery. Someone flying closer to the ground, however, might describe the patent as being directed to the abstract idea of delivering content secured with licenses and encryption. The pitfall of this type of analysis is that a reviewing court can essentially find any patent abstract because it is that same court that chooses how broadly to define the patent.
Rather than attempt to determine a specific abstract idea to which the claims are ostensibly directed, the Court punted. Stating that it was adopting the same procedure used by the Federal Circuit in Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, the Court merely concluded that the claims were abstract and moved on to part two of the test without providing supporting reasoning.
In reality, the Federal Circuit determined the claims in Bascom to be abstract due to their recitation of a long-standing, conventional method of organizing human activity, which was analogous to claims in other cases that were found to be abstract. The Court here earns a 5-yard penalty for its misinterpretation of the precedent. Ultimately, the Court could have easily found the claims to be abstract if it has followed the Federal Circuit, so this confusion probably had no impact on the case's outcome.
Moving on to part two of Alice, the Court first noted that all steps of the claim, when viewed individually, were "well-understood, routine, and conventional." The Court backed up this reasoning by citing to a series of § 101 cases finding similar elements to be conventional. Turning to the ordered combination of these elements, the Court noted that:
The only possible "non-conventional and non-generic arrangement" in the '764 patent is the combination of asymmetric encryption with content licenses. But combining those two concepts is not new. Indeed, the '764 patent references two earlier patents that both consider combining asymmetric encryption with licenses to enforce usage restrictions.
The Court also differentiated Digital Media's claim from that of Bascom, observing that "[t]he functions [that claim 1] provides are neither specific nor discrete[, and] the patent does little more than recite an abstract idea (delivering content secured with licenses and encryption) with the instruction to perform that idea on generic computer components."
Concluding that the claim failed the Alice test and was therefore ineligible, the Court wrote "the '764 patent seeks to solve a problem that has existed for many years." But solving an old problem is not at issue when conducting a § 101 analysis. The issue instead is whether the claims define a new solution that provides improvements to a computer or technological field. In other words, does the claim define a new technical tool? But again, the Court's error here is minor and non-determinative.
Once more, it seems that the Alice test is being used as a proxy for a § 112 analysis. The Court repeatedly emphasized the need for claims to be "specific" in order to be viewed favorably under § 101, noting that "[c]laim 1 refers to functions . . . without specifying how those functions are to be performed." Neither the statute nor the Supreme Court's jurisprudence bar this sort of functional claiming -- in fact, § 112 explicitly allows it. Nonetheless, three years post-Alice, it is becoming clear that one must be careful when using unqualified verbs in claim language.
