8 F.4th 1310
Fed. Cir.
2021
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Background

  • PersonalWeb owns three related patents (’310, ’280, ’662) claiming use of algorithm-generated content-based identifiers (e.g., cryptographic hashes) to perform data-management tasks across networked systems.
  • Representative claim (’310 claim 24) recites: receive a request with a content-dependent name, compare that identifier to values, and grant or deny access based on the comparison.
  • The patents’ asserted functions: control access to data (’310), retrieve/deliver data (’280), and mark duplicates for deletion (’662).
  • Multiple IPRs previously found many challenged claims unpatentable as anticipated/obvious; Federal Circuit affirmed several Board decisions and addressed claim construction in earlier appeals.
  • After IPRs, defendants (Google, YouTube, Facebook, EMC, VMware) moved for judgment on the pleadings under 35 U.S.C. § 101; the district court granted the motion, holding asserted claims ineligible as directed to abstract ideas.
  • PersonalWeb appealed; the Federal Circuit affirmed, applying Alice/Mayo step one and step two and finding no inventive concept or factual issue preventing resolution on the pleadings.

Issues

Issue Plaintiff's Argument Defendant's Argument Held
Are the asserted claims directed to an abstract idea (Alice step 1)? Claims solve a computer-network problem by using unique, algorithm-derived content identifiers to locate/distribute data without relying on file systems or filenames. Claims recite using a hash-based content identifier, comparing identifiers, then controlling/retrieving/deleting data — i.e., mental processes/abstract data-management steps. Yes. Claims are directed to an abstract idea: multistep mental/data-management processes using content-based identifiers.
Do the claims contain an inventive concept that makes them patent eligible (Alice step 2)? Using cryptographic/content-dependent hashes in place of conventional names and the claimed applications were not routine or conventional and provide efficiency improvements. The asserted improvements merely restate the abstract idea; using generic hash functions and conventional computers adds no inventive concept. No. The claims lack an inventive concept; the asserted improvements are abstract and not "significantly more."
Was judgment on the pleadings appropriate given alleged factual disputes (Berkheimer)? Specification disclosures create factual disputes about whether elements were conventional, so § 101 should not be resolved on a Rule 12(c) motion. The alleged innovations lie entirely in the abstract realm; no plausible non-abstract technical improvement exists to preclude resolution on the pleadings. Judgment on the pleadings was proper. The specification does not plausibly allege an inventive concept in the non-abstract realm.

Key Cases Cited

  • Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) (two-step framework for § 101)
  • Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (standard for inventive concept inquiry)
  • Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (when claims can be directed to an improvement in computer functionality)
  • DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (examples of computer-rooted solutions that survive § 101)
  • Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (analyzing abstract ideas performed by mental processes or mathematical algorithms)
  • Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (factual disputes can preclude § 101 resolution at pleading stage when inventive concept depends on conventionality findings)
  • SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018) (claims to new abstract ideas remain abstract)
  • Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) (content-identifier claims directed to abstract idea)
  • Intell. Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed. Cir. 2017) (indexing/searching analogies and library indexing as abstract)
  • CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (mental processes/pencil-and-paper analogies indicate abstraction)
  • RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017) (data + algorithm + new form of data can be abstract)
  • Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905 (Fed. Cir. 2017) (use of unique identifiers to communicate information is abstract)
  • OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (automation of manual methods with generic computers insufficient for eligibility)
  • BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (network-context claims can still be abstract)
  • Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017) (claims that merely automate manual processes fail § 101)
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