by Dennis Crouch
This is the third eligibility post in as many days. In a non-precedential decision issued September 10, 2024, the Federal Circuit affirmed the PTAB’s rejection of claims in a patent application directed to eliciting tips for media content — finding them ineligible. In re McDonald, No. 24-1015 (Fed. Cir. Sept. 10, 2024).
The applicant here is a Utah start-up VidAngel, Inc., that helps folks “Filter out the stuff you don’t want to see or hear in your streaming movies & TV shows, like profanity, nudity, violence & more. But, the invention here has a different focus – it is a setup for eliciting and receiving tips from consumers of media content like streaming movies.
Read the Decision here: 24-1015.OPINION.9-10-2024_2381784
Representative claim 21 recites:
21. A computer-implemented method, comprising:
[1] providing media content to a consumer computer device;
[2] presenting a tipping interface, related to the media content, to the consumer computer device; and
[3] receiving tipping input from the consumer computer device, through the tipping interface, wherein the tipping input includes information associated with a tip;
wherein: [4] the tipping interface is a computer-based interface; and
[5a] the media content includes closing credits and the tipping interface is presented at the beginning of or during the closing credits; or [5b] the tipping interface is presented at one or more trigger points during the media content.
Application No. 15/454,677. The examiner rejected the claims under § 101 as directed to the abstract idea of managing commercial tipping payments without significantly more. The examiner also found the claims obvious over various prior art references. The Board affirmed both grounds of rejection.
Federal Circuit: In a non-precedential opinion by Judge Prost, joined by Judges Taranto and Hughes, the Federal Circuit affirmed the Board’s decision. The court declined to oral arguments in the case.
On appeal, VidAngel argued that that the PTAB had gone too far characterizing the invention as the abstract idea of tipping or merely implementing tipping on a computer. Rather, it argued that the claims cover a novel integration of technology — particularly requiring that the same computer device presents both the media content and the tipping interface, and by imposing limitations on the timing of presenting the tipping interface relative to the media content.
Of course, the court disagreed — noting that the claims themselves are drafted at too high a level level of abstraction and results focused– rather than toward a particular technological solution. “Managing tipping payments is an administrative problem, not a technological problem.” The court explained that the claim “recites operations that would ordinarily take place in advising one to present a way for a media content consumer to make a tip payment” and, in the end, represents “a conceptual administrative solution devoid of technological implementation details.” At step two of Alice, the court found nothing in the claim that transforms it into a patent-eligible application of the abstract idea.
Earlier in the week, the court came to the opposite conclusion on eligibility in Contour IP v. GoPro. We can contrast GoPro, which emphasized the claims’ focus on a specific technological improvement – technical solution to a technical problem. That patent claimed parallel recording of high and low quality video streams with wireless transmission of only the low quality stream in order to enable real-time viewing on a separate device and overcoming bandwidth limitations. The McDonald application lacked the same level of specific technological implementation details. The GoPro court also highlighted the importance of claim construction that added a technological definition to a claim term that might have otherwise been seen as generic.
I believe the GoPro patentee also benefitted from the fact that the invention required non-computer-related components such as lenses and sensors. McDonald illustrates the continuing difficulties applicants face in overcoming § 101 rejections for computer-implemented business methods.
Obviousness Analysis: The court also affirmed the Board’s obviousness rejections. For claim 21, the Board had found the claim obvious over two prior art references. In the appeal, the applicant argued against any motivation to combine these two. The court concluded otherwise – holding that the proposed combinations would be “predictably successful on their face.”
The applicants were represented by Joseph Shapiro of Shapiro IP Law who is also prosecuting the application. The USPTO was represented by its Solicitor Farheena Rasheed and her team.