There Is No “I”(P) in “Team”
Judge Donato Rule 12(c) motion granted; five patents found invalid for claiming an abstract concept: “the unremarkable concept of people working together on a project.” Open Text S.A. v. Box, Inc. et al. Case No. 13-cv-04910-JD
Open Text S.A. is the Luxembourg subsidiary of Canadian “Enterprise Information Management” provider Open Text Corp. “Enterprise Information Management” is, generally, the capability to store, share, and classify documents and information, to provide version control and may include enterprise collaboration tools. Open Text filed originally filed suit against Box. Inc. and Carahsoft Technology Corp., alleging infringement of a dozen patents in the Eastern District of Virginia. The case was subsequently transferred to the Northern District, where Box is headquartered, and, last week, Judge Donato granted Box’s Rule 12(c) motion on the pleadings, ruling that five of these patents, all sharing a common specification, are invalid under 35 U.S.C. § 101 for claiming patent-ineligible subject matter, specifically, “the unremarkable concept of people working together on a project.”
The methods and systems disclosed by each of the patents relate to facilitating workplace collaboration through the Internet or an intranet, without the need for specialized software or an IT administrator. Judge Donato found this core concept inherently abstract, and its implementation as described by the patents, namely “standard technology like browsers, servers, and networks,” not inventive.
Section 101 of the Patent Act provides protection for “any new and useful process, machine, manufacture, or composition of matter.” The Supreme Court has read an important implicit exception into Section 101; namely laws of nature, natural phenomena, and abstract ideas are not patentable. Most recently, in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court invalidated patents claiming the use of a computer to implement a long-established method of settling trades between investors by using a neutral middleman (or, escrow) to make sure traders complete the transactions they agreed to. The Supreme Court concluded that taking this abstract idea and merely putting it on a computer, without more, is not sufficient to transform the claim into a patentable invention.
A simple two-part test determines whether a patent runs afoul of the prohibition on abstract ideas, laws of nature, and natural phenomena. The court “determines whether the claims at issue are directed to one of those patent-ineligible concepts” and, if so, “the court then considers the elements of the claim—both individually and as an ordered combination—to determine whether any additional elements transform the nature of the claim into a patent-eligible application of the abstract idea.” Id. at 2355; see also Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296-97 (2012).
Judge Donato synthesized the post-Alice case to conclude that the first step requires a court to “distill the gist of the claim,” or to generalize the purpose of the claim at a reasonably high level of generality. In the case before Judge Donato, the representative claim the parties agreed to fight over recited:
A system for providing a collaborative workspace, comprising:
(i) a network-connected server having input and access capabilities;
(ii) a workgroup creator on the server for receiving instructions from a primary user and for creating a dedicated network site in response to the received instructions, the instructions including a list of secondary users and a working relationship defined between the users;
(iii) a messaging system for communicating existence of the dedicated network site to a selected ones of the list of secondary users;
(iv) a network for accessing contents of the dedicated network site by the primary and secondary users via a web-browser; and
(v) memory associated with the dedicated network site for storing information submitted by the primary and the secondary users, wherein the stored information is accessible to the users in accordance with the predefined working relationship.
Box contended that the purpose of the claim is nothing more than sharing information among collaborators, while Open Text argued it instead claimed a system for providing collaborative workspace on a network server. Judge Donato agreed with Box, noting that Open Text’s proposal appeared to be a mishmash of the claim’s preamble and the first claim limitation that further smuggled in a reference a “network server.” The Court noted that Open Text was seeking to have the Court agree it employed a limitation that is characteristic of the claim’s implementation, rather than its general idea, in an effort to avoid its being deemed an abstract concept. But Judge Donato then asked what makes an idea like “sharing information among collaborators” abstract, anyway?
Alice did not precisely define the boundary between abstract and concrete ideas, focusing on the claim at hand and concluding that “a method of organizing human activity” is an abstract idea. Alice, 134 S. Ct. at 2356-57. Subsequently, in Ultramercial, Inc. v. Hulu 772 F.3d 709, (Fed. Cir. 2014), the Federal Circuit equated an “abstraction” with “an idea, having no particular concrete or tangible form.” “Sharing information among collaborators” is pretty clearly a “method of organizing human activity,” and Judge Donato thus concluded the claims at issue failed the first step.
An abstract idea nevertheless may be patent-eligible if additional claim elements [beyond the abstract idea] ‘transform the nature of the claim’ into a patent-eligible application. That is, the additional elements must supply an “inventive concept in the physical realm of things” and may therefore be said to cover something “significantly more than the ineligible matter itself.” Here, Judge Donato found nothing inventive about the implementation of the claim, all of which “could be done using a web page,” which were hardly unknown in 1997, and nothing to suggest any novel or unconventional use of that well-known technology. Hence, the claim was invalid.