by Dennis Crouch
Two-Way Media v. Comcast (Fed. Cir. 2017)
Most internet communications involve unicast communications – one point to one point. Although Patently-O is accessed by many thousands each day, each HTTP request is treated separately and uniquely. In some circumstances, you might imagine that multi-casting would be more efficient and capable of reducing certain network traffic. Two-Way’s asserted patents (U.S. Patent No. 5,778,187; 5,983,005; 6,434,622; and 7,266,686) are directed to system and methods for multicasting communications over a network.
Claim 1 of the ‘187 patent, for instance, is directed toward a “method for transmitting message packets over a communications network” and includes steps of “converting a plurality of streams of audio and/or visual information into a plurality of streams of
addressed digital packets;” “routing” the streams to “one or more users” based upon “selection signals” received from the users; and “monitoring” the receipt on a user-by-user basis with information about “the time that a user starts [and] stops receiving” the A/V stream.
Two-Way sued Comcast (and others) for infringement. However, the district court granted the defendant’s motion for judgment on the pleadings – holding that the claims were invalid as ineligible under 35 U.S.C. Section 101 as interpreted by the Supreme Court in Alice and Mayo. In that process, the district court refused to consider evidence of the patents’ novelty and nonobviousness – holding that such evidence would be irrelevant to a Section 101 inquiry.
The proffered materials are irrelevant to the § 101 motion for judgment on the pleadings. None of the materials addresses a § 101 challenge to claims of the asserted patents. The novelty and nonobviousness of the claims under §§ 102 and 103 does not bear on whether the claims are directed to patent-eligible subject matter under § 101. . . . Because the proffered materials are irrelevant to the instant§ 101 issue, I have not considered them.
[District Court Judgement: Two-Way Dismissal].
The district court then went-on to find that the claims were directed to a collection of abstract ideas, including sending information; directing information; and monitoring receipt of information. The court then went on to hold that the claims lacked any ‘inventive concept’ beyond the abstract idea itself.
On appeal, the Federal Circuit has fully affirmed these holdings – noting particularly that novelty and non-obviousness evidence is not relevant to the inventive concept question:
[The district] court correctly concluded that the [submitted evidence] was relevant to a novelty and obviousness analysis, and not whether the claims were directed to eligible subject matter. Eligibility and novelty are separate inquiries. Affinity Labs (holding that “even assuming” that a particular claimed feature was novel does not “avoid the problem of abstractness”).
Note here that the court seemingly offered a road-map for the patentee — a technological arts test — noting that the specifications appear to describe a “system architecture as a technological innovation” but “the claim—as opposed to something purportedly described in the specification—is missing an inventive concept.”
Invalidity judgment affirmed.
worst CAFC decision in years: "ordered combination" novel but not "inventive concept" when doesnt preempt prior art?https://t.co/nQ9yB8BJQC
— J Nicholas Gross (@JNGross) November 1, 2017
Claim 1 of the ‘187 patent:
1. A method for transmitting message packets over a communications network comprising the steps of:
converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol, for each stream, routing such stream to one or more users,
controlling the routing of the stream of packets in response to selection signals received from the users, and
monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users,
wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.