As we recently discussed in the Planet Bingo case, the Federal Circuit is starting to apply the Supreme Court’s recent ruling in Alice Corp. v. CLS Bank. The recent case of I/P Engine Inc. v. AOL provides additional guidance on how the Federal Circuit will apply Alice. I/P Engine sued AOL, Google, Target, and other entities for alleged infringement of its patents for “a method for filtering Internet search results that utilizes both content-based and collaborative filters.”
· “Content-based” filtering determines relevance by “extracting features such as text from an information item.”
· “Collaborative filtering” determines relevance based on feedback from “other users with similar interests or needs.”
The court noted that the claims at issue in Alice may well have described a useful and innovative method of doing business, but because they did not disclose any significant advance in science or technology, they fell outside section 101 [of the Patent Act]. Section 101 under Alice mandates not only that claims disclose an advance in science or technology—as opposed to an innovation in a non-technological discipline such as business, law, sports, sociology, or psychology – but also that this advance be both significant and well-defined.
The court noted that that this “technological arts” test comports with the Constitutional purpose to promote the progress of the “useful arts” by conveying patent rights and that a claim is not “technological” merely because it recites the use of a computer or other technology. Instead, the inventive concept itself must be new technology, a novel application of scientific principles and natural laws to solve problems once thought intractable. Where it’s unclear whether claims are sufficiently “technological,” patent eligibility will turn on whether the claims describe a narrow inventive application of a scientific principle, or instead simply recite steps that are necessarily part of the principle itself. Specificity is especially important with regard to software patents, where claims tend to be exceedingly broad, development proceeds at breakneck speed, and innovation often occurs despite the availability of patent protection rather than because of it.
As a policy matter, the court stated:
Finally, and most importantly, the technological arts test recognizes that there has to be some rough correlation between “the give and the get” – applicants who make little, if any, substantive contribution to the existing body of scientific and technical knowledge should not be afford broad monopoly rights that potential stifle future research and development.
The court ruled that the claimed invention failed to meet the subject matter eligibility requirement for patentability. The asserted claims simply describe the well-known and widely-applied concept that it is often helpful to have both content-based and collaborative information about a specific area of interest. A person planning to visit London, for example, might consult a guidebook that would provide information about particular museums in London (content data) as well as information about what other people thought of these museums (collaborative data). The decision illustrates the well-known adage that “pigs get fat, hogs get slaughtered.” I.e., being too “hoggish” in claim drafting can get a patent thrown out. As the Federal Circuit concluded, at its core, Section 101 prohibits claims which are “overly broad”… in proportion to the technological dividends they yield.
