996 F.3d 1355
Fed. Cir.2021Background
- Samba TV sued Alphonso asserting U.S. Patent No. 9,386,356 (the ’356 patent) and earlier asserted U.S. Patent No. 9,026,668 (the ’668 patent) in separate districts; cases were consolidated and transferred to Northern District of California.
- The Eastern District of Texas construed a disputed term in the ’668 patent pre-transfer; based on that construction Samba stipulated noninfringement of the ’668 patent.
- Alphonso moved to dismiss the ’356 patent claims under 35 U.S.C. § 101 (patent-ineligible subject matter); the California district court denied the motion treating claim 1 (and claim 10 similarly) as representative.
- The ’356 patent claims involve: (1) a networked device (TV) generating fingerprint/primary data; (2) a relevancy-matching server that matches and searches targeted data; and (3) a client/mobile device with a sandboxed application that can be ‘‘bypassed’’ by various mechanisms described in the specification.
- The California court later granted Alphonso summary judgment of noninfringement (based on the Texas claim construction); on appeal the Federal Circuit reversed the denial of Alphonso’s §101 motion (holding certain ’356 claims ineligible) and affirmed the Texas court’s construction of “communication session” in the ’668 patent as bidirectional.
Issues
| Issue | Samba (plaintiff) argument | Alphonso (defendant) argument | Held |
|---|---|---|---|
| Are claims 1, 10, 13, 18, 20 of the ’356 patent patent-eligible under §101? | Claims solve a technological problem: enable TVs and mobile devices to operate together by intermediating communication and delivering targeted content through a sandboxed app — a specific improvement to computer functionality. | Claims are directed to the abstract idea of targeted advertising and only use generic computer components; the claims do not describe how sandbox bypassing is achieved and thus lack the required specificity/inventive concept. | Reversed denial of §101 motion: claims are directed to an abstract idea and lack an inventive concept — patent ineligible. |
| Proper construction of “communication session” in the ’668 patent | “Communication session” can include one-way communication; ordinary meaning supports one-way sessions and specification discloses one-way covert channels. | The specification and figures portray the claimed communication session as a bidirectional exchange; one-way communication is not the same as the claimed ‘‘session.’’ | Affirmed Texas construction: “communication session” requires bidirectional (sent and received) communication. |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (establishes two-step §101 framework)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (inventive concept requirement at Alice Step 2)
- Berkheimer v. HP Inc., 881 F.3d 1360 (fact questions can bear on whether elements are conventional)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (claims directed to an improvement in computer functionality can be eligible)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (claims to unconventional Internet-centric solution found eligible)
- BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (inventive concept can be non‑generic arrangement of known elements)
- Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (abstract idea analysis guidance)
- McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (focus on whether claim improves computer capabilities)
- Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299 (claims to new kind of file/supporting security functionality found eligible)
- Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (claims to improved memory system found eligible)
- Core Wireless Licensing S.A.R.L. v. LG Elecs., 880 F.3d 1356 (claims improving presentation on small screens eligible)
- Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (abstract idea applied to content delivery)
- Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (targeted advertising characterized as abstract idea)
- Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (claims must recite how a result is achieved, not just result)
- Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (importance of claim specificity to avoid abstract characterization)