Message Publishing Patents Found Invalid under 35 U.S.C. § 101
In a recent decision by the U.S. Court of Appeals for the Federal Circuit, the Court held all asserted claims of five U.S. patents to be invalid under 35 U.S.C. § 101 because the claims recite patent-ineligible subject matter.
EasyWeb sued Twitter for infringement of the following five patents directed to a message publishing system: U.S. Patent Nos. 7,032,030; 7,596,606; 7,685,247; 7,689,658; and 7,698,372. The patents are generally directed to allowing any person or organization to easily publish a message on the Internet. According to the specification of the '247 patent, at the time of the invention (priority filing date of March 11, 1999), publishing a message on the Internet was a daunting task because of cost, limitations in existing software, and a lack of technical knowledge. The patents sought to address this problem by inventing a message publishing system that accepts messages in multiple ways, such as by fax, telephone, or email, verifies the message was sent by an authorized sender, and converts and publishes the message on the Internet.
Namely, the message is received and converted from a first format (e.g., fax) to a second format, with the second format preferably being one or more webpages. The message is stored within an Internet web server, and is retrieved from the storage area when a request for the message has been received from a requester. The message is then transmitted to the requester over the Internet.
The parties agreed that claim 1 of the '247 patent is representative:
1. A message publishing system (MPS) operative to process a message from a sender in a first format, comprising:
a central processor;
at least one sender account;
at least one storage area configured to store at least a first portion of the message; and
software executing in the central processor to configure the processor so as to:
identify the sender of the message as an authorized sender based on information associated with the message in comparison to data in the sender account, wherein the identification is dependent upon the first format;
convert at least a second portion of the message from the first format to a second format; and
publish the converted second portion of the message so as to be viewable in the second format only if the sender has been identified as an authorized sender.
EasyWeb sued Twitter for patent infringement in the U.S. District Court for the Eastern District of New York. At the District Court, Twitter moved for summary judgment of non-infringement and ineligibility under 35 U.S.C. § 101. The District Court granted the motion, finding that the patents are directed towards ineligible subject matter, or in the alternative that Twitter did not infringe any of the patents.
On appeal, the Federal Circuit followed the Supreme Court's two-step framework for determining patent-eligibility under § 101. First, a determination is made as to whether the claims at issue are directed to a patent-ineligible concept. Second, if the claims are directed to patent-ineligible subject matter, the court considers the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.
Beginning with the first step, the Federal Circuit concluded that claim 1 is directed to an abstract idea. The Federal Circuit summarily noted that claim 1 merely recites "familiar concepts of receiving, authenticating, and publishing data", and as explained in a number of prior cases, claims involving data collection, analysis, and publication are directed to an abstract idea. The Federal Circuit referred to Elec. Power Grp. v. Alstom S.A. (Fed. Cir. 2016), which held that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent-ineligible concept."
In addition, because Claim 1 simply recites use of generic computer technology to perform data collection, analysis, and publication rather than reciting an improvement to a particular computer technology, the Federal Circuit easily found claim 1 to be directed to the abstract idea of receiving, authenticating, and publishing data.
Turning to the second step, the Federal Circuit found that claim 1 did not contain an inventive concept sufficient to transform the nature of the claim into a patent-eligible application. Again, the Federal Circuit summarily stated that the "elements of claim 1 simply recite an abstract idea or an abstract idea executed using computer technology" with no explanation.
EasyWeb argued that an inventive concept arises from the ordered combination of steps in claim 1, but the Federal Circuit disagreed. The Federal Circuit stated that Claim 1 "recites the most basic of steps in data collection, analysis, and publication and they are recited in the ordinary order." The Federal Circuit concluded by finding that "all the claims are directed to the abstract idea of receiving, authenticating, and publishing data, and fail to recite any inventive concepts sufficient to transform the abstract idea into a patent eligible invention."
It's easy to understand the Federal Circuit's opinion with respect to the first and last functions in claim 1 (e.g., to identify the sender of the message and publish the converted second portion of the message), but the Federal Circuit did not comment at all on the middle step to "convert at least a second portion of the message from the first format to a second format." At least in that step, some data processing occurs that is not encompassed by the alleged abstract idea of receiving, authenticating, and publishing data as characterized by the Court. That is not to say that the broad feature of "converting data" from a first format to a second format is new in any way, but it at least recites more than found in the prior cases where claims were held to be abstract because the claims only recited "collecting information, analyzing it, and displaying certain results of the collection and analysis." It would seem that converting data is distinguished over the more generic "analyzing" data. Clearly, though, if claim 1 recited more details for how the conversion was performed, the claim would be stronger and more likely to withstand § 101 challenges. But the fact that the Federal Circuit ignored this feature and summarily rejected all claims is disappointing.
EasyWeb Innovations, LLC v. Twitter, Inc. (Fed. Cir. 2017)
Nonprecedential disposition
Panel: Circuit Judges Lourie, Moore, and Hughes
Opinion by Circuit Judge Hughes
