Board Denies CBM Review Under § 101 for Software Patent

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In Google Inc. v. Network-1 Technologies, Inc., CBM2015-00113, the Board instituted a Covered Business Method Review (CBM) of a computer software patent under § 103, but denied the petitioner’s request to review the patent under § 101, counter to the Board’s propensity to invalidate patents under § 101.

The patent at issue, U.S. Patent No. 8,904,464, relates to a technique for identifying a work, such as a digital audio or video file, without the need to modify the work. The identification is performed by extracting features from or about the work (such as a small sample of the work) and then comparing the extracted features with records in a database or library. Thereafter, an action such as connecting to an associated website is taken based on the determined identification of the work.

The petitioner, Google, argued that the patent claims are directed merely to the abstract idea of “linking a media work to a business action.” Google stated that such abstract ideas have been performed manually for decades, citing as an example, reader card services, where magazines would provide cards in their periodicals for readers to indicate an interest in a particular advertisement, and the advertiser could take some business action based on the interest. Google further argued that the claims add only conventional computer technology to this abstract idea. The patent owner, Network-1, responded that Google’s characterization of the claims as an abstract idea was faulty because it omitted core features of the claims. The Board agreed with Network-1, pointing to particular language in the independent claims reciting a particular technical step involved in the identification of work, namely “correlating, by the computer system using a non-exhaustive, near neighbor search, the first electronic media work with [an] electronic media work identifier.” The Board concluded that the claims could not be properly summarized simply as “linking a media work” because of this claim step.

The Board stated that Google’s example of using reader service cards did not require correlation and search as recited in the claims. It stated that although it could be argued that the reader “searches” the card for a box to check corresponding to a particular advertisement, this is far from the processes of the claims, which require receiving an electronic media work, and correlating it with an identifier. Although there may be an analogies between the processes, the claimed process requires more than mere human recognition. The claims require that the electronic media work be identified through particular types of searching processes, which is different from linking an advertisement to its listing on a reader service cards.

The Board further stated that the claims were necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer technology, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), one of few Federal Circuit decisions upholding the validity of computer-implemented patent claims under § 101. The Board stated that the correlation processes of the claims can involve searching large feature sets in an attempt to locate a close, but not necessarily exact match. The requirement of preprocessing presumes a large number of entries for comparison, which would require the use of the computer in the relevant time period. The Board noted that it is difficult to imagine the use of the reader service cards that would require such extensive searching and processing. It concluded that the claims are necessarily rooted in computer technology and not merely in the implementation of a known abstract idea from the business context.

Although the Board denied institution on the § 101 grounds, it did institute a CBM review under § 103 for obviousness.

Drafters of computer software patent applications should avoid writing claims that could arguably be performed manually or through mental steps. Patent claims with technical implementation details, particularly features providing technical solutions to technical problems, will more likely be able to withstand challenges under § 101.

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