Affinity Labs of Texas, LLC v. amazon.com Inc.
838 F.3d 1266
Fed. Cir.2016Background
- Plaintiff Affinity Labs sued Amazon, alleging Amazon Music infringed U.S. Patent No. 8,688,085 (the ’085 patent) covering a network-based media system that streams content to handheld wireless devices with a customized user interface.
- Representative claim 14 recites: a network-based media managing system with a customized user interface, a collection of instructions on a handheld device to request streaming, and a network-based delivery resource that retrieves and streams content.
- Amazon moved for judgment on the pleadings under 35 U.S.C. § 101, arguing the asserted claims are directed to an abstract idea and lack an inventive concept.
- The magistrate judge recommended, and the district court adopted, judgment for Amazon, finding the claims abstract (delivering selectable media to a portable device) and not inventive because they merely invoke generic computer/network components.
- On appeal the Federal Circuit held the claims are directed to an abstract idea and do not supply an inventive concept; the customized user interface and streaming recitations are generic and functional.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claim 14 is directed to an abstract idea under step one of Mayo/Alice | Affinity: streaming to wireless devices was not routine/conventional at priority date; claim embodies concrete tech innovation | Amazon: claim covers the abstract idea of delivering user-selected media to a portable device, using generic components | Held: Directed to an abstract idea (delivery of selectable media to portable devices) |
| Whether claim limitations (customized UI, network components) supply an inventive concept under step two | Affinity: customized user interface and claimed system elements provide concrete implementation/inventive concept | Amazon: limitations are generic, functional descriptions of well‑known components, not a particular technical solution | Held: No inventive concept; claims are result‑focused and use conventional computer/network technology |
| Whether factual disputes (novelty of streaming then) preclude §101 dismissal | Affinity: magistrate improperly made factual findings; expert testimony shows novelty | Amazon: eligibility analysis focuses on whether claim is drawn to an abstract idea and its implementing details; novelty not dispositive here | Held: Court may consider commonplace technological background; expert’s novelty assertion irrelevant to §101 outcome |
| Whether “customized user interface” meaningfully narrows claim to patent‑eligible subject matter | Affinity: customization distinguishes the claim as concrete | Amazon: customization is a broad, abstract concept (tailoring content) | Held: Customized UI is abstract/generic and does not render claims patentable |
Key Cases Cited
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (Sup. Ct. 2012) (framework for determining patent-eligibility; inventive concept requirement)
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (Sup. Ct. 2014) (two-step Mayo/Alice §101 test applied to software claims)
- In re TLI Commc’ns LLC, 823 F.3d 607 (Fed. Cir. 2016) (claims using generic components to perform abstract data‑processing held ineligible)
- Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (process of exchanging ad view for media access is an abstract idea)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (distinguishing claims that improve computer functionality from those that add conventional components)
- Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015) (customizing information based on user data is an abstract idea)
- Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (result‑focused, functional claim language often indicates ineligibility)
- OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (affirming that fundamental economic/technical concepts can be deemed routine/conventional on a motion to dismiss)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014) (collecting/recognizing/storing data is an abstract idea)
- Mortg. Grader, Inc. v. First Choice Loan Servs., Inc., 811 F.3d 1314 (Fed. Cir. 2016) (claims reciting generic interfaces, networks, databases are abstract)