"Quick Look Test" Used by District Court to Support Lack of Preemption and Find Software Claims Patent Eligible

On April 15, 2016, the U.S. District Court for the Northern District of California issued an Order Denying a Motion to Dismiss because the patent at issue, U.S. Patent No. 5,870,087, was found to be directed to patent eligible subject matter.

The '087 patent, entitled "MPEG Decoder System and Method having a Unified Memory for Transport Decode and System Controller Functions," is directed to methods for reconstructing frame data for memory saving benefits.  Full-motion digital video requires a large amount of storage and data transfer bandwidth.  Thus, video systems use various types of video compression algorithms to reduce the amount of necessary storage and transfer bandwidth.  Prior art MPEG video decoder systems have generally included a separate memory for transport and system controller functions.  The '087 patent describes that it has generally not been possible to combine these memories, due to size limitations.  Thus, the '087 patent describes new ways to reconstruct frame data that enables saving memory and usage of a single memory for the MPEG decoder system.

Claim 10 is representative and reproduced below.

10.  A method for performing video decoding in an MPEG decoder system which includes a single memory for use by transport, decode and system controller functions, the method comprising:
    receiving an MPEG encoded stream;
    demultiplexing one or more multimedia data streams from the encoded stream, wherein said demultiplexing one or more multimedia data streams from the encoded stream operates using a first unified memory;
    performing MPEG decoding on the multimedia data streams, wherein said performing MPEG decoding operates using said first unified memory; and
    a system controller controlling operations within the MPEG decoder system, wherein said controlling operations accesses code and data from said first unified memory;
    wherein said demultiplexing one or more multimedia data streams, said performing MPEG decoding, and said controlling operations each use said first unified memory.

The Defendant filed the Motion to Dismiss alleging that claims 1, 5, 7-11, and 16 of the '087 patent are invalid under 35 U.S.C. § 101 as not being directed to patent eligible subject matter.

The District Court followed the Supreme Court's two-step framework for determining whether there is § 101 patent invalidity.  First, it is determined whether the claims at issue are directed to a patent-ineligible concept -- i.e., a law of nature, a natural phenomenon, or an abstract idea.  If so, then the court moves on to the second step, that is, to determine if the additional elements beyond the patent-ineligible concepts (if any) transform the nature of the claim into a patent-eligible application (i.e., a search for an inventive concept -- that is, an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself).

The Defendant asserted § 101 patent invalidity on the basis that the claims at issue are trying to patent an abstract idea, or an idea having no particular concrete or tangible form -- namely, integrating multiple memories into a single/unified memory.

As seen in many court orders and decisions, the District Court here complained that the step one inquiry may be a complicated matter if only because it is not clear what abstract means in the first place, and the step one inquiry is further complicated by the fact that it is not always easy to say what a patent claim is "directed to."

The District Court stated a summary of prior decisions that attempted to define how to perform step one including (1) that a court must consider the claims "in their entirety to ascertain whether their character as a whole is directed to excluded subject matter"; (2) a court must identify and define whatever fundamental concept appears wrapped up in the claims; (3) a court must identify the purpose of the claim -- in other words, determine what the claimed invention is trying to achieve; (4) a court should recite a claim's purpose at a reasonably high level of generality; and (5) a court should apply step one as a sort of quick look test, the purpose of which is to identify a risk of preemption and ineligibility.

With these varying degrees of applications of step one, in the instant case, the District Court turned to the purpose of the claims.  The District Court simply stated:

[T]he purpose of the claims at issue is to decompress digital video using a single memory.  That is the gist of the invention at issue.  Given this purpose, the Court is satisfied that there is no genuine risk of preempting future research and development -- i.e., Avago is not simply claiming an abstract idea in the attempt to lay claim to a building block of future research and development; the invention has specific configuration, not a broad abstract idea.

The District Court did not extrapolate further into the analysis, but rather stated that because the Defendant failed to establish that the claims at issue are directed to a patent-ineligible concept, i.e., an abstract idea, the Court need not address step two of Alice which embodies the inventive concept test.

Thus, Defendant's Motion to Dismiss based on a challenge to the validity of the '087 patent under 35 U.S.C. § 101 was denied.

Looking at the reasoning given by the Court of the "purpose of the claims at issue is to decompress digital video using a single memory", it is hard to see how this was not found to be an abstract idea.  Step one of the Alice test has been considered easy to show, and most courts have given little weight to any arguments, but instead focus on the step two inventive concept analysis.  But here, the District Court used preemption as reasoning to support a finding that the claims were not directed to an abstract idea.  Use of preemption as a sole reason to support patent eligibility is rare and against the USPTO guidelines.

The Federal Circuit has followed the Supreme Court's lead in rejecting arguments that a lack of total preemption equates with eligibility, at least within buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014), and Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).  Even though the District Court in this case found preemption arguments persuasive, the '087 patent claims are likely to be challenged again.

All claimed components, other than the integrated memory, appear to be admitted by the '087 Patent to be well known in the art, as indicated in the '087 patent's own "MPEG BACKGROUND" section.  Thus, had step one of the Alice test been found to be true (i.e., the claims are directed to an abstract idea), then the claims most likely would have also failed step two (i.e., inventive concept) and would have been found to be patent ineligible. 

Avago Technologies General IP (Singapore) Pte Ltd. v. Asustek Computer, Inc. (N.D. Cal. 2016)
Order Granting Plaintiff's Motion to Reconsider (Avago I); and Denying Dfendant's Motion to Dismiss (Avago II) by District Judge Edward M. Chen