Brightedge Techs., Inc. v. Searchmetrics, GMBH.
304 F. Supp. 3d 859
N.D. Cal.2018Background
- BrightEdge sued Searchmetrics for infringement of five patents related to search-engine-optimization (SEO) technology; the patents claim methods/systems for measuring and optimizing "shares of voice," correlating search referrals with conversions, and forecasting opportunity.
- Defendants moved for judgment on the pleadings under Fed. R. Civ. P. 12(c), arguing the asserted claims are patent-ineligible under 35 U.S.C. § 101.
- The parties grouped the patents into three families (Group 1: '706 & '746; Group 2: '700; Group 3: '089 & '863) and presented representative independent claims for each group.
- Plaintiff argued the claims recite specific, computer-implemented technical solutions (channel-centric shares-of-voice calculations, correlators, forecasting models) and that dependent claims supply meaningful limitations.
- Defendants argued the claims are directed to abstract ideas (data collection, mathematical analysis, market optimization) and use generic computer implementation that does not supply an "inventive concept."
- The court granted judgment for Defendants, finding all asserted claims invalid under § 101 at Alice steps one and two and denying leave to amend as futile.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether representative claims are directed to patent-eligible subject matter under § 101 (Alice step one) | Claims are specific, computer-based, channel-centric technical solutions that overcome Internet-related problems and are not mere abstract ideas | Claims are directed to longstanding abstract activities: gathering, organizing, mathematically analyzing data to improve marketing performance | Court: Claims are directed to abstract ideas (data collection/analysis, mathematical processes); Internet/computer implementation does not change that conclusion |
| Whether the claims contain an "inventive concept" to transform the abstract idea into patent-eligible applications (Alice step two) | Dependent claims and claim limitations (e.g., shares-of-voice formula, parsing referral headers, correlator/forecasting steps) supply specific technical detail and inventive concept | Limitations are functional/result-focused and describe conventional data sources/techniques or generic computer implementation; no technical improvement to computers/networks | Court: No inventive concept; claim elements are well-understood, routine, conventional activities or generic computer implementation |
| Whether computer implementation language (processors, storage media, instructions) rescues eligibility | Computer implementation of the claimed methods provides a technological improvement and specificity | Mere recitation of generic computer components is insufficient to convert an abstract idea into a patent-eligible invention | Court: Generic computer implementation does not save the claims; insufficient to show a specific improvement in computer functionality |
| Whether leave to amend to add another patent should be granted | Plaintiff sought leave to file a Fourth Amended Complaint to add a patent and argued efficiency/coordinated discovery justified leave | Defendants opposed; court noted eligibility defects go to the claims and amendment would not cure § 101 problems | Court: Denied as moot/futile because existing claims invalid under § 101; advised Plaintiff to file a new suit if it wishes to assert other patents |
Key Cases Cited
- Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) (establishes the two-step test for patent-eligibility under § 101)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (laws of nature, natural phenomena, and abstract ideas are not patentable; inventive concept requirement)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.) (claims directed to a specific improvement in computer functionality can be patent-eligible)
- In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir.) (claims using conventional/generic technology in functional terms are abstract)
- McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir.) (claims that improve computer animation via specific rules can be patent-eligible)
- FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir.) (claims that merely collect and analyze information using rules are abstract)
- Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329 (Fed. Cir.) (result-focused claim language and conventional technology do not show an inventive concept)
- Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed. Cir.) (evaluate whether claim's character as a whole is directed to excluded subject matter)
- Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.) (claims that specify desirable information to gather/analyze but not how to do so are abstract)