Customedia Technologies, LLC v. Dish Network Corporation, 951 F.3d 1359

Patents U.S. Nos. 8,719,090 ("'090") and 9,053,494 ("'494") disclose a system for delivering and locally recording targeted advertising via a remote Account-Transaction Server (ATS) and a programmable local receiver (e.g., set-top box) with one or more individually controlled/reserved advertising storage sections.
DISH petitioned for CBM review; the PTAB found many claims of both patents ineligible under 35 U.S.C. § 101 and additionally found certain '090 claims unpatentable under §§ 102 and 112.
Customedia appealed the PTAB's § 101 and § 102 determinations; the Federal Circuit reviews § 101 as a legal question (with underlying facts).
The court applied the Supreme Court's two-step Alice/Mayo framework: (1) whether the claims are directed to an abstract idea; (2) whether the claim elements supply an inventive concept.
The court concluded the claims were directed to the abstract idea of delivering targeted advertising using generic computer components and did not improve computer functionality; it affirmed the PTAB's § 101 rulings and did not reach the § 102 decision.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether claims are patent-eligible under § 101 (Alice step one)	Customedia: claims improve computer operation by dedicating reserved storage for advertising, increasing speed/efficiency and preventing storage failures	DISH/PTAB: claims are directed to the abstract idea of targeted advertising using a computer as a tool	Held: Directed to abstract idea; not an improvement in computer functionality; fails step one
Whether the claimed reserved advertising-storage limitation changes eligibility (claim construction/claim scope)	Customedia: the reserved-storage limitation requires a dedicated storage section that excludes non-advertising data and is structurally specific	PTAB: limitation does not require exclusion or any particular structure; construction is broad/generic	Held: Court did not adopt Customedia’s construction and declined to resolve construction merits because § 101 outcome unaffected; claim not an improvement to computer functionality
Whether claims recite an inventive concept (Alice step two)	Customedia: dedicating a storage section for specifically identified advertising data was innovative over prior art	DISH/PTAB: the claims recite generic components (server, receiver, storage, processor); invoking conventional computers is routine and conventional	Held: No inventive concept; claims recite only conventional computer components and functions; fail step two

Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014) (two-step framework for § 101; abstract ideas not patentable)
Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (framework for inventive concept analysis under § 101)
Bilski v. Kappos, 561 U.S. 593 (2010) (claims directed to abstract fundamental economic practice)
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (claims held eligible where they improved computer data storage/retrieval itself)
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (claims eligible where they solved a problem particular to the Internet and improved computer functionality)
Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) (claims directed to a specific improvement in computer memory held eligible)
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018) (claims directing selection, analysis, and reporting of information held abstract and ineligible)
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016) (use of conventional mobile devices as tools for an abstract idea held ineligible)
In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016) (claims using generic physical components as an environment for abstract idea held ineligible)
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (business concept of displaying ads in exchange for content access held abstract and ineligible)