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PersonalWeb Technologies LLC v. Google LLC, Appeal Nos. 2020-1543, -1553, -1554 (Fed. Cir. Aug. 12, 2021)

In this week’s Case of the Week, the Federal Circuit affirmed a district court’s judgment on the pleadings that the claims of three patents owned by appellant PersonalWeb were invalid as patent-ineligible under 35 U.S.C. § 101. The claims were generally directed to data processing methods wherein a substantially unique identifier is assigned to a data item based on the data item’s content, and upon receiving a request containing such an identifier, a computer would compare the content-based identifier to a plurality of values and perform various data management functions, such as granting or disallowing access to the item, retrieving the item, or marking the item for deletion.

Applying the two-step patent eligibility analysis of Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Court first found that the claims were directed to abstract ideas, broadly analogizing the claimed processes to a library call system based on content-based book identifiers and characterizing each of the recited functions as mental processes that can be performed in the mind or with a pencil and paper. In an interesting additional analysis, the Court referenced cases finding each of the steps in the claimed processes to be individually “abstract,” and holding that “[s]tringing together the claimed steps by adding one abstract idea to another amounts merely to the abstract idea of using a content-based identifier to perform an abstract data-management function.” (Citation and internal markings omitted.)

At step two of the Alice inquiry, the Federal Circuit rejected PersonalWeb’s argument that the claims contained an inventive concept because they recited an allegedly inventive use of cryptographic hashes in generating the content-based identifiers. The Court observed that the patents’ purported “improvements” set forth by PersonalWeb merely recited the abstract ideas above, and that even accepting the view that the particular recited uses were not well-known, routine, or conventional, “a claim for a new abstract idea is still an abstract idea,” and “merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”

The Court also dismissed PersonalWeb’s contention that fact questions created by the patents’ disclosures made judgment on the pleadings improper, and affirmed the judgment of invalidity.

A copy of the opinion can be found here.

By Jason Wrubleski

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Seabed Geosolutions (US) Inc. v. Magseis FF LLC, Appeal No. 2020-1237 (Fed. Cir. Aug. 11, 2021)

In an appeal from a final decision upholding patentability in an inter partes review, the Federal Circuit vacated and remanded, holding that the Patent Trial and Appeal Board erred in its construction of challenged claims of U.S. Reissue Patent No. 45,268 (“the ‘268 patent”). The ’268 patent was generally directed to seismometers for use in seismic exploration, and the challenged claims recited a “geophone internally fixed within [the] housing.” Based entirely on extrinsic evidence, the Board found that the term “fixed” had a special meaning in the art that limited the claim to “non-gimbaled” geophones, and determined based on that finding that the prior art did not disclose the geophone limitation. Petitioner Seabed appealed, arguing that the Board erred in its claim construction. The Federal Circuit agreed, explaining that the intrinsic evidence contained no discussion of gimbaled or non-gimbaled geophones, and that the Board erred both (1) in relying on extrinsic evidence given the clarity of the intrinsic evidence, and (2) in its construction of the challenged claims which was narrower than the broadest reasonable interpretation based on the intrinsic evidence alone.

A copy of the opinion can be found here.

By Annie White

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