The case In re TLI Communications LLC Patent Litigation (Fed. Cir. 2016) is the first Federal Circuit case since Enfish relating to the interpretation of the Alice/Mayo test under 35 U.S.C. §101. Unlike Enfish, the claims in TLI were found to be abstract and directed to generalized steps performed on a computer using conventional computer activity. In particular, TLI’s claims were found to be directed to the abstract idea of “taking, organizing, classifying, and storing photographs.”
What This Means To You
- Claims can be found to be directed to an abstract idea if they are generalized steps performed on a computer using conventional computer functions.
- Be careful when writing specifications, as the characterization of the invention and claim elements can dramatically impact the result of the Alice/Mayo
TLI sued a number of parties and the defendants filed a Rule 12(b)(6) motion to dismiss, alleging the claims were not directed to patentable subject matter under 35 U.S.C. §101. The district court granted the motion and TLI appealed.
Under the now-familiar two-part test described by the Supreme Court in Alice, the Federal Circuit was tasked with first determining whether the claims at issue were directed to a patent-ineligible concept, such as an abstract idea. If so, the court then had to consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transformed the nature of the claim into a patent-eligible application.
Here, when evaluating the “directed to” inquiry, the court focused on whether the claims are directed to an improvement in the computer, or whether they are directed to the use of conventional or generic technology. In particular, the court looked to the specification and its characterization of the telephone, server, and other elements of the claims, and determined that they were typical, standard uses of those elements. Also, the claims were not found to be a technical solution to a technical problem, as in Diamond v. Diehr, 450 U.S. 175 (1981).
The court determined that the claims are not directed to a specific improvement to computer functionality, but rather, to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two. The court affirmed the district court’s judgment.
The characterization of the claim elements in the patentee’s specification weighed heavily in the court’s determination that the elements of the claims were standard elements. Therefore, care must be taken when characterizing the problem being solved in the specification.
As a follow-up to both Enfish and TLI, the USPTO issued a memo on May 19, 2016 regarding these decisions, including further guidance to examiners: First, in the “directed to” inquiry, “it is appropriate to compare the claim to claims already found to be directed to an abstract idea in a previous court decision.” Second, the “’directed to’ inquiry applies a filter to claims, when interpreted in light of the specification, based on whether their character as a whole is directed to a patent ineligible concept.” Third, “the Federal Circuit cautioned against describing a claim at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention.” Fourth, “an invention's ability to run on a general purpose computer does not automatically doom the claim.”