Bascom Research, LLC v. LinkedIn, Inc. and Facebook, Inc., Case Nos. 12-cv-6293, 6294 (Judge Susan Illston)
"While the Supreme Court has not precisely defined 'abstract idea,' lower courts since Alice have invalidated patents encompassing a broad range of abstract ideas beyond [patentee] Bascom's proposed scope," according to Judge Illston in the latest of several recent patent invalidity opinions based on Section 101 out of the Northern District.
Judge Illston's summary judgment order addressed four patents with claims directed to identifying documents and establishing relationships between them, including the following claim which she found to be representative:
A method for providing a framework for document objects located on a network, the method comprising:
creating one or more link directories for storing link relationships between document objects located on the network, wherein the one or more link relationships are separate from the document objects;
creating a link relationship between a first document object located on the network and a second document object located on the network;
assigning attributes describing the link relationship, wherein the attributes are stored with the link relationship;
presenting the link relationship with one or more of the attributes describing the link relationship.
Following the Alice framework, the court first concluded as a threshold matter that the patent claims are directed to an abstract idea. Without any clear definition of "abstract" to guide the analysis, as noted above, Judge Illston emphasized (1) the "common, age-old" nature of the patented concept outside of the computer context (which she analogized to, e.g., maintaining a document index at a library) and (2) the ability to mentally perform it.
On the issue of age, the court appeared to adopt defendants' view that "the idea of establishing relationships between documents dates back thousands of years as evidenced by the catalog system at the library of Alexandria...." Citing the Cogent Medicine case on which we reportedwe reported in October, Judge Illston pointed out that "courts have found similar 'commonplace and time-honored practices' to be abstract ideas."
The court next noted that the claimed concept of "storing and using associations between documents can also be performed mentally," and that the Supreme Court and Federal Circuit "have generally considered such 'mental processes' to be unpatentable." It made no difference to the Court whether "generic computer implementation" is required to perform the claims.
Having found that the patent claims are directed to an abstract idea, the court turned to step two of the Alice framework to decide whether the claims contain an "inventive step." Discussing the representative claim above, the court essentially reduced the claim to: (1) "organizing a set of relationships between documents and storing that information separate from the documents," (2) "relating two documents applied in a generic and conventional network context," (3) "storing information about the link relationships," and (4) "add[ing] the act of 'presenting.'" According to the court, this claim, like the other asserted claims, does not add transformative elements.
As in the Cogent Medicine decision, the court also dismissed Bascom's position that claim construction was necessary before determining patent eligibility. Bascom proposed constructions for various terms including the words "link relationship," and thereby sought to incorporate limitations such as "pointers connecting two or more document objects." But Judge Illston found (without explanation) that "even if the Court adopted Bascom's proposed constructions" – which defendants did not oppose for purposes of the motion – "those constructions do not demonstrate that the patents are not directed to the abstract idea of establishing relationships between documents or that the patents contain transformative elements."
This latest decision further reinforces the fact that post-Alice courts seem more willing to find that claims covering digital operations are simply abstract implementations of old practices (especially when capable of mental performance) that have been introduced into a generic computer environment.
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