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.