Computer as a Tool: Abstract Idea

Customedia Tech. v. DISH Network (Fed. Cir. 2020)

The PTAB sided with the patent challenger DISH – cancelling the challenged claims of Customedia’s US Patents 8,719,090 and 9,053,494.  On appeal, the Federal Circuit has affirmed – holding that the “claims are ineligible under § 101.”

The invention here relates to facilitating advertising via multimedia system. The Federal Circuit provided the following example synopsis: “a cable set-top box with built-in storage sections that may be leased or sold to advertisers.”  The claims also include a remote server that provides the advertising data.

Alice Step 1: The patentee argued that specifically allocating data space for advertising was an improvement to computer functionality — it ensures that space is available for advertising. On appeal, the Federal Circuit disagreed:

To be a patent-eligible improvement to computer functionality, we have required the claims to be directed to an improvement in the functionality of the computer or network platform itself. . . . [I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool. . . . We have also held that improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality. . . .

The claims here . . . do not enable computers to operate more quickly or efficiently, nor do they solve any technological problem. They merely recite reserving memory to ensure storage space is available for at least some advertising data. . . . The only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task. Therefore, the claimed invention is at most an improvement to the abstract concept of targeted advertising wherein a computer is merely used as a tool. This is not an improvement in the functioning of the computer itself.

Abstract idea.

42 thoughts on “Computer as a Tool: Abstract Idea

  1. 8

    Nope. “Advertising content” is no more an abstraction than a phone directory is an abstraction. It would be much better to do away with our hand-waving “directed to an abstraction” concept and adopt a European-ish rule, according to which only technological improvements can distinguish an invention over the prior art. For example, if the invention is a computer-implemented business method (like here), the differences between the claimed invention and the prior art are assessed, and only those differences that are technological are assessed for inventive step. That way, if the only differences are in the (non-technical) business method and not in the (technical) operation of the computer on which it is implemented, patentability would be denied.
    Which is kind of what’s going on in this case. Let’s just be honest and say that patents are only for improvements in technology, and that business methods aren’t “technology.”

    1. 8.1

      would be much better to do away with our hand-waving “directed to an abstraction” concept and adopt a European-ish rule,

      Except for the fact that the US Sovereign has not chosen to have a ‘technological arts’ test.

      Instead, our Sovereign has chosen a Useful Arts test.

      That the Supreme Court has disregarded this is very much (a huge) part of the problem.

    2. 8.2

      I for one recognize the difference between an explicitly prescriptive statement (“It would be better…”) and a descriptive statement. I also recognize that responding to you as if you said something else would either make me appear to be either simple or someone who lives under a bridge.

      I’m not sure how one persuasively separates non-technical improvement of a business method from the technical improvement of a computer when the business method is being run on the computer. Most of the time I review a European sister-application to a case I am working on, the separation of the technical and non-technical is not especially satisfying. I am not very familiar with their system, but as an outsider it doesn’t look great.

      That said, that problem (separating technical/non-technical) does seem to be a more manageable problem than our current problem (Alice).

      An even bigger issue is that the whole approach is doomed to failure given how much of the patent bar pays their mortgage based on inventions are arguably non-technical. It’ll never happen here.

      1. 8.2.1

        doomed to failure given how much of the patent bar pays their mortgage based on inventions are arguably non-technical

        Why bother being accurate with the law when one can slander attorneys en masse?

        (and Ben wants to crow about honor…?)

      2. 8.2.2

        would either make me appear to be either simple or someone who lives under a bridge.

        Congrats Ben — you responded in a way to achieve BOTH simple AND someone who lives under a bridge.

      3. 8.2.3

        Ben thanks for your observations on “technical” in the EPO examination of patentability. In your reviews of prosecution files at the EPO you presumably read through the argumentation from the Office, why some effect or other is not a “technical” effect, and then you read the argument in response from the patent attorney. Would you say that the participants in that argument are merely shouting past each other? Or are they having a meaningful arrowing focussed detailed debate, each relying on solid legal sources, case law, the EPO’s MPEP?

        You might not find the dialogue especially satisfying, but is it working in practice, as between Applicant and Exam Division, at the EPO?

        1. 8.2.3.1

          “at the EPO” should be stressed.

          Do you know why, MaxDrie?

          Hint: it has to do with aligning with a Sovereign’s choices.

  2. 7

    The right result for the right reasons.

    “Advertising content” is an abstraction and reciting it can’t be used to confer eligibility upon an otherwise non-patentable claim. It’s no different than trying to claim an old book by reciting the allocation of a page for “favorite dog food branding concepts.”

    Grow up, people.

    1. 7.1

      Grow up, people

      … says the LEAST grown-up poster on the blog…

      Stultifying.

  3. 6

    IPO importantly indicates that this is an appeal from a CBM [Transitional Program for Covered Business Method Patents]. That is an AIA inter partes PTO proceeding which accepts limited scope challenges to certain threatened issued patent claims under 35 U.S.C. § 101, but it is automatically sun setting. This is not a normal ex parte examiner record below on this issue.

  4. 5

    So these criminals would hold that deep learning is not patent eligible for the same reasons. So methods of processing information (a physical process) that rival or surpass humans are not eligible for patentability with no valid reason given other than the CAFC says so.

    1. 5.1

      I think we get the right president in the next election that we need to push for either impeaching all the CAFC judges or disbanding the CAFC and appoint qualified people.

      1. 5.1.1

        Sorry Night Writer, but there is NO presidential candidate in sight that would ascribe to your desires.

        You need to seek another path.

        1. 5.1.1.1

          Patents aren’t even a blip on the radar of federal policy among presidential candidates. I almost fell over in 2014 when Obama actually devoted a single sentence to patent reform in the 2014 State of the Union address.

          1. 5.1.1.1.1

            I hear you LR.

      2. 5.1.2

        “I think we get the right president in the next election that we need to push for either impeaching all the CAFC judges or disbanding the CAFC and appoint qualified people.”

        Who is the “we”?

        1. 5.1.2.1

          Meh, he’s stated before the feelings that Trump could be counted on to ‘fire’ all of the current CAFC judges or some sort.

          He’s being sloppy (and wrong).

    2. 5.2

      “Deep learning” <—- LOL

      1. 5.2.1

        Before you chuckle, Malcolm, you do realize that that term is a term of art and is NOT to be confused with the colloquial meaning of the term, eh?

  5. 4

    What’s incredible about this is that all made up by the judges at the CAFC. Alice doesn’t say this. A complete fabrication of what is eligible and what is not by judges appointed by SV.

    Let’s be clear. These are machines that require space, time, and energy. The functions they perform are enabled and a finite set of solutions that one skilled in the art understands. Information processing is a physical process.

    The only solution is to disband the CAFC.

    >To be a patent-eligible improvement to computer functionality, we have required the claims to be directed to an improvement in the functionality of the computer or network platform itself. . . . [I]t is not enough,

    1. 4.1

      The other thing is you see all these abstract words used to invalidate the claims that have nothing to do with the underlying physical structure and underlying physic of information processing.

      It is like invalidating a forklift because a human could do something similar.

      1. 4.1.1

        It is like invalidating a forklift because a human could do something similar.

        It’s worse. You are seeing the ‘atom b0mb’ of eligibility rather than the scalpel of prior art.

        AND you have ‘celebrations’ because the desired Ends have been reached (with no critical thinking of the Means used to achieve those Ends).

      2. 4.1.2

        >>It is like invalidating a forklift because a human could do something similar.

        Thia analogy only works if the forklift is claimed as “metal; configured to lift objects”. In which case, the rejection sounds much less silly.

        1. 4.1.2.1

          F in serious “wah,” Ben — claims are read in view of the knowledge of PHOSITA, as you (as an examiner) should be well aware of.

          Yet more lack of honor from you as you put your feelings above the actual law…

    2. 4.2

      There is a falsity in the premise of the statement.

      >To be a patent-eligible improvement to computer functionality,

      Eligibility is NOT ONLY reached (under a proper interpretation of the words of Congress) by an example path of improving the tool of a computer qua computer.

      The ‘reasoning’ may here is tantamount to demanding that ‘applied math’ must be exactly equal to ‘math’ (while being befuddled about the philosophy of ‘MathS’).

      Here’s an easy prediction: the comments will be sharply divided among the regular contributors along the ‘well-worn’ labels of anti-patent and pro-patent.

      1. 4.2.1

        They have made their own laws for 101 that have no basis in statutory law or Scotus precedent.

        We need to disband the CAFC.

        1. 4.2.1.1

          I am going to have to disagree with your second part there regarding SCOTUS.

          It is very clear that there has been a “train the simians in a cage with a firehose” thing going on between the Supreme Court and the CAFC.

          Michel realized too late.
          Radar lost his ability to lead (and could only offer ‘observations’ prior to his departure).
          Prost never had leadership.

          There certainly is blame to share around. The CAFC lacked a judge with fortitude to rebuke the Supreme Court when that patent court needed it most. But make no mistake: the prime driver here is NOT the CAFC.

          1. 4.2.1.1.1

            Anon, disagree if you will, but point to a Scotus case that supports this holding?

            1. 4.2.1.1.1.1

              Alice.

              As you might remember, there were claims in Alice for which BOTH sides agreed that the statutory category of “Machine” was satisfied. Nonetheless, those claims as well as other claims were swept up and destroyed by the Supreme Court.

              This is not a new point.

      2. 4.2.2

        The big thing is that it is nonsensical. Alice is about being directed to an abstract idea and then is there anything more.

        So –anti-patent judicial activists at the CAFC have taken the second part of that “anything more” and then decided what counts in the “anything more” based on their personal thoughts on the matter.

        What is the basis for saying that a physical process to transform represented information is not patent eligible? What is the basis for that holding?

        1. 4.2.2.1

          What you have is some very unethical judges that are just doing whatever they please with the innovation engine of the USA.

          What they are doing is making a finding of fact that patents are bad unless they meet one of their criteria and then excluding patentability based on policy for areas they believe do not promote innovation.

          It is simply outrageous.

  6. 3

    As soon as I saw this posting by Dennis it reminded me of a posting on the other blog that has, as of now, attracted 47 comments. Here a Link:

    link to ipwatchdog.com

    Are the two blogs flagging up one and the same case, I wonder. If so, could any two blogs be more different, in their treatment of the same case?

    1. 3.1

      Are the two blogs flagging up one and the same case, I wonder.

      Don’t have to wonder. If you read the actual cases, it becomes readily apparent that the two are not the same case.

      Similar? Certainly.
      Same? Easy no.

    2. 3.2

      That link now shows 56 comments — but has veered off track from patent law.

      Actual treatment of the patent law does not appear to be being engaged so as to be able to support or deny your proclamation of “could any two blogs be more different, in their treatment of the same case?” even if we recognize that the cases are similar but not the same.

  7. 2

    1. A data delivery system for providing automatic delivery of multimedia data products from one or more multimedia data product providers, the system comprising:

    a remote account transaction server for providing multimedia data products to an end user, at least one of the multimedia data products being specifically identified advertising data; and

    a programmable local receiver unit for interfacing with the remote account transaction server to receive one or more of the multimedia data products
    and for processing and automatically recording the multimedia data products,
    said programmable local receiver unit including at least one individually
    controlled and reserved advertising data storage section adapted specifically for storing the specifically identified advertising data,

    said at least one advertising data storage section being monitored and controlled by said remote account transaction server and such that said specifically identified advertising data is delivered by said remote account transaction server and stored in said at least one individually controlled and reserved advertising data storage section.

    Anyone want to tell me what “including at least one individually
    controlled and reserved advertising data storage section adapted specifically for storing the specifically identified advertising data” could possibly mean? How does one have a section “adapted specifically for storing the specifically identified advertising data” and how is that somehow different from a “general” adaption for storing “data, generally”?

    The prosecution of the patent is on public pair and it’s not hard to see what happened here – The examiner continually pointed out that leasing space is not a structural distinction. First the examiner didn’t give it patentable weight, then the examiner rejected previous language in means-plus as indefinite for lacking a disclosed structure, then the Examiner cited MPEP 2173.05(g) (functional claim limitations may cause indefiniteness). Then the examiner made 101 rejections and a 112(a) written description rejection to the feature of “to store only the identified advertising data.”

    The examiner repeatedly cited prior art that was structurally the same and eventually in the notice of allowance cited a second prior art that read on the reservation feature but-for the reservation was not of “advertising data” and a first prior art that was described thusly: “Marsh teaches this limitation literally as ‘a designated portion of the storage device 206 having a predetermined memory capacity (e.g. 10 MB) which is specifically reserved for storage of advertisements at the time the client system software is installed.’…There is no basis upon which one of ordinary skill in the art would have found it obvious, at the time of the invention, to add this specialized teaching to those of Hertz and Logan.” i.e. The examiner found prior art that showed that the art knew of a techinque, suspectly provided a conclusory statement that there is no motivation ( – no motivation to use the technique to achieve the results of using the technique, mind you), and summarily allowed the claim.

    In sum, the examiner kind of made a masterful showing from every facet of the statutory scheme that the applicant didn’t disclose an enabling teaching, didn’t overcome a technical problem, and didn’t even really define what he was doing. And to the extent that anything could be gleaned about the claimed scope entailed, that exact language was conceived of prior to the instant invention. What this applicant did was disclose a functional result that they thought had utility (protip – all functional results have utility), provide zero support that they did anything more than wish for a result, and then repeatedly argued that their statement of function entitled them to a patent.

    I will put this in the strongest terms I can given that in an inductive world it is impossible to deductively foreclose all outcomes: I know of no situation in the field of computer programming where the disclosure of an allegedly novel functionality, supported solely by the disclosure that you have a box that performs the functionality, ever leads to a valid, non-obvious patentable claim. I see patents issue on it all the time, and yet I know of nothing that has even been upheld when subjected to even the most basic of attacks upon the disclosure. The predictability in the field compels the conclusion that either a) the act was previously obvious to the art to be used for just the reason it is being used now, or b) the act was beyond the reach of the art prior to the instant disclosure, and remains beyond the reach after the disclosure. Somewhere along the line, many drafters apparently forgot the basic premise that if you want protection for achieving some novel result, you should probably provide some disclosure as to how the result is achieved rather than relying upon the fact that the burden lies with the challengers of your patent claim. Turns out when you sue someone for millions of dollars, they’re motivated to rise to that challenge.

    I cannot adequately express just how much you must be screwing your clients over when you press this situation. Because you provide no structure and no enabling teaching, you place yourself between the rock of unenablement and the hard place of the prior art being capable of performing the functionality. Because you describe no algorithm or structure, you frustrate any attempt to find prior art except that which someone happened to describe using the same functional language as you (and the most likely outcome is that it *is* out there, but may not be in the PTO’s databases, which is most likely the case when the function calls for an indefinite act). Structure is concrete, function is largely a matter of prose, so failing to provide structure for the functionality robs the public of the mechanism for proving the prior existence of some part of the functional scheme. Frankly – though I doubt the CAFC will say this anytime soon despite it being unquestionably an important consideration – that alone calls for the defeat of the patent.

    This case is a paragon of what I mean when I say “Applicants don’t really want examination, they just want an allowance” – these claims issued on the fourth round of prosecution some seven years after examination began and it issued for a reason that the examiner spent 5 of the 6 previous actions consistently complaining about; with the notice of allowance pointing out that the feature was known in the art, with only the flimsiest of reasons as to why patentability existed (namely, that there was no motivation to use a known feature for the known benefit of the known feature, in complete contrast to multiple sections of MPEP 2143.). Unsurprisingly, someone else came in, made the same kind of arguments the examiner raised, and prevailed. Had the 101 attack failed, the examiner had provided a roadmap which would have led to no less than three other plausible attacks on the claim, not the least of which is that the original fact finder stated on the record that at least two prior arts taught the allegedly patentability-granting technique.

    1. 2.1

      Whenever I mention “wearing down” the Examiner I am told that there is no such thing. But then, here, much to my wry amusement, I read:

      ” The examiner found prior art that showed that the art knew of a techinque, suspectly provided a conclusory statement that there is no motivation….”

      Random has his suspicions. And so do I.

    2. 2.2

      with only the flimsiest of reasons as to why patentability existed

      Random has his suspicions. And so do I.

      One objective question: At the end of the day, did the Examiner do his job?

      1. 2.2.1

        I see that we have no takers on whether or not the examiner has done their job here…

        (So much ‘easier’ to just blame the applicant — must be one of those ‘gee, he was worn down by all that ‘cutting and pasting of form paragraphs’ work”)

        Examiners: maybe learn how to win arguments (you know, so that you can actually do the job that you are paid for).

    3. 2.3

      Thanks much Random for the superb analysis — a keeper for sure.

      Given that, then, the only — yet major — problem is that the patent / claims should have been trashed on 102 and/or 103 and/or 112 . . . and NOT on 101 / the unconstitutional Alice.

      The ends DO NOT justify the means.

      1. 2.3.1

        Given that, then, the only — yet major — problem is that the patent / claims should have been trashed on 102 and/or 103 and/or 112 . . . and NOT on 101 / the unconstitutional Alice.

        There is no law that prefers a particular invalidation sequence. The examiner raised Bilski (as Bilski had only just been decided) and the applicant’s response was not to the merits, but rather that the bilski rejection did not conform to the bilski guidance that came out after the rejection had mailed. The fact that the defendant could have spent a lot more money to defeat the claim under some other statutory section doesn’t mean the defense was wrong to raise 101, and from the standpoint of protecting their client, they should have.

        Either way, its not like the patentee wasn’t on notice that “leasing” space was a concern.

        1. 2.3.1.1

          The point is NOT about ‘sequence,’ Random, so your reply of “ There is no law that prefers a particular invalidation sequence” is non-responsive.

          The point offered is explicitly a “Ends do not justify the Means” type of thing.

          As to “applicant’s response was not to the merits, but rather that the bilski rejection did not conform to the bilski guidance that came out after the rejection had mailed.” — this too is non-responsive and insinuates a position NOT evident. Again, this falls along the line that YOU (the Royal you) just don’t get to use any Means to arrive at an Ends. There is a reason (and yes, it IS tied to the merits) that you MUST use the designated Means.

          As to Defendants raising 101 post grant — another non-responsive reply, as the focus was on the pre-grant examiner’s actions.

  8. 1

    Before PROST, Chief Judge, DYK and MOORE, Circuit Judges.

    MOORE, Circuit Judge.

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