Last week, the U.S. Court of Appeals for the Federal Circuit issued an order in PersonalWeb Technologies LLC v. Google LLC, No. 20-1543 (Aug. 12, 2021), affirming a district court decision that certain claims of three patents were ineligible for patenting, and therefore invalid, under 35 U.S.C. § 101.
PersonalWeb’s patents concern data-processing systems for receiving a request containing a content-based identifier for a data item, comparing the content-based identifier to a plurality of values, and granting or disallowing access to the data item based on the comparison.
PersonalWeb sued multiple companies for patent infringement. The cases were stayed pending several IPRs that ultimately found all challenged claims invalid over the prior art. After the stay was lifted, the defendants in the patent lawsuits moved for judgment on the pleadings that the remaining asserted claims were ineligible under 35 U.S.C. § 101, which motion was granted.
On appeal, the Federal Circuit noted that under 35 U.S.C. § 101 patent-eligible subject matter is defined as “any new and useful process, machine, manufacture, or composition of matter, or any new or useful improvement thereof” and that Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014), held that this provision excepted laws of nature, natural phenomena, and abstract ideas. In reviewing patent eligibility, the Court applied the Alice two-step analysis to evaluate: 1) whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea; and 2) whether, considering the elements of each claim both individually and as an ordered combination, any additional elements transform the nature of the claim into a patent-eligible application. At step one, the Court found that the data-management functions at issue “can be performed in the human mind” or “using a pencil and paper,” and therefore the claims were directed to an abstract idea. The Court cited prior cases finding that content-based identifiers were abstract. The Court applied this analysis to each of the primary claim elements. At step two, the Court rejected PersonalWeb’s argument that the use of cryptographic hashes set forth an inventive concept, holding that “merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”