In Internet Patents Corp v. Active Network, the Federal Circuit considered yet another case involving a claim of patent ineligibility under 35 U.S.C. 101. The patents at issue were owned by Internet Patents Corporation, a non-practicing entity, and essentially related to “the use of a conventional web browser Back and Forward navigational functionalities without data loss in an online application consisting of dynamically generated web pages.”

The district court found the claims to be directed towards the patent ineligible abstract idea of “retaining information lost in the navigation of online forums” and thus ineligible for patent protection under the Supreme Court’s ruling in Mayo v. Prometheus. Internet Patents Corporation appealed to the Federal Circuit.

The Federal Circuit began its opinion by reviewing the core Section 101 cases such as Diamond v. Chakrabarty, Bilski v. Kappos, Mayo v. Prometheus, and Alice v. CLS. In Alice v. CLS, the Court outlined a two step process for analyzing whether a claim is directed towards an abstract idea and therefore patent ineligible. First, the court must determine whether the claims at issue are directed towards a patent ineligible abstract idea. If so, the court must determine whether the element of each claim, both individually and as an ordered whole, contain sufficient additional elements to transform the nature of the claim into a patent eligible application of the abstract idea. The second step has been characterized by the Court as a search for inventive concept.

Thus, the Federal Circuit began its analysis by asking whether the claims at issue were directed towards a patent ineligible abstract idea. The Federal Circuit agreed with the district court that the claims were directed towards the abstract idea of retaining information lost in the navigation of online forums. The court cited the fact that the specification of the patent at hand specifically described certain features of the patent as conventional, which Mayo held to be indicators of a lack of inventive concept. Further, the patent itself did not provide any details as to how the information retention was to be accomplished. The court then considered whether the dependent claims under consideration added anything that could sufficiently differentiate the claimed subject matter from the abstract idea itself but ultimately found that the claims added nothing and merely recited implementation by generic computer elements. Therefore, the Federal Circuit affirmed the district court’s finding that the claims were directed towards a patent ineligible abstract idea.

Ultimately this case did little to clarify to the murky mess that is Section 101 jurisprudence. However, there are a couple tips that can assist with patent drafting contained therein. First, while drafting an application, it is best to avoid describing elements of the invention as “routine” or “conventional.” Second, when drafting claims that may be interpreted as being directed towards an abstract idea, it is best to include as much specific details as necessary to distinguish the claims from the idea itself. While this will differ from invention to invention, in the case of computer implemented processes, it might be useful to include dependent claims specifically outlining the detailed operation of the invention.

Peter McLellan

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