by Dennis Crouch
On appeal, the Federal Circuit has affirmed that Intellectual Ventures’ asserted patent claims are invalid for lacking eligible subject matter. Intellectual Ventures v. Capital One (Fed. Cir. 2015) (Patent Nos. 8,083,137, 7,603,382, and 7,260,587).
The basic idea behind the patent ‘137 patent is to help users budget and then stick to their budget. Incredibly important task that many of us find quite challenging. The court identified Claim 5 as representative. That claim includes two steps: (1) storing a user profile with a set of categories – each with a pre-set budget limit; an (2) transmitting a summary of transactions for a category along with the pre-set budget limit. Claim text:
5. A method comprising:
storing, in a database, a [user] profile … containing one or more user-selected categories to track transactions associated with said user identity, wherein individual user-selected categories include a user pre-set limit; and
causing communication, over a communication medium and to a receiving device, of transaction summary data in the database for at least one of the one or more user-selected categories, said transaction summary data containing said at least one user-selected category’s user pre-set limit.
In reading this claim in the context of Alice Corp., the Federal Circuit first found it directed to the abstract idea of “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting).” In Alice Corp. step two, the court found no inventive concept: “it is clear that the claims contain no inventive concept. . . . Instructing one to ‘apply’ an abstract idea and reciting no more than generic computer elements performing generic computer tasks does not make an abstract idea patent eligible.”
The court similarly agreed that the claims of the ‘382 patent are also ineligible. Claim 1 provides:
A system for providing web pages accessed from a web site in a manner which presents the web pages tailored to an individual user, comprising:
an interactive interface configured to provide dynamic web site navigation data to the user, the interactive interface comprising:
a display depicting portions of the web site visited by the user as a function of the web site navigation data; and
a display depicting portions of the web site visited by the user as a function of the user’s personal characteristics.
Thus, the claim relates generally to a system for customizing information based upon information known about a user and also web-site navigation data (such a the time-of-day a site is being visited). With Alice Corp. step 1, the court agreed that the aforementioned gist is in fact an abstract idea because such information tailoring is “a fundamental . . . practice long prevalent in our system . . . .” Quoting Alice Corp. Regarding Alice Corp step 2, the court found no inventive concept. Intellectual ventures had argued that its approach provided a dynamic and real-time application of the concepts — however, the court rejected that argument on its facts — finding that “the claims are not so limited.”
Of special concern for the patentees here is the claimed “interactive interface” configured to implement the method. Intellectual Ventures argued that device provided an inventive application of the broader idea. The Federal Circuit disagreed – finding that “nowhere does Intellectual Ventures assert that it invented an interactive interface …. Rather, the interactive interface limitation is a generic computer element.”
Intellectual Ventures third patent included claims with more substance, including a process of sorting, scanning, and organizing images obtained from hard copy prints. However, those asserted claims were found not-infringed.