Intellectual Ventures (IV) sued Symantec in the District of Delaware, alleging infringement of U.S. Patent No. 5,537,533. The District Court invalidated the '533 patent on a summary judgment motion as being directed to patent-ineligible subject matter. IV appealed.
Claim 25 of the '533 patent recites:
25. A method for remote mirroring of digital data, said method comprising the steps of:
copying the data from a primary network server to a nonvolatile data buffer in a data transfer unit which is digitally connected to the primary network server, the primary network server including an operating system which is capable of accessing a nonvolatile server store, the data copied to the data transfer unit being a substantially concurrent copy of data which is being stored by the operating system in the nonvolatile server store of the primary network server;
copying the data from the data transfer unit to an input end of a communication link which has an output end physically separated from its input end;
generating and sending a spoof packet to the operating system of the primary network server; and
copying the data from the output end of the communication link to a nonvolatile server store on a remote network server.
Essentially, the claimed invention is a fairly straightforward backup process with the possible exception of the spoof packet, which is used to speed up the transaction.
The Supreme Court's Alice Corp. v. CLS Bank Int'l case set forth a test to determine whether claims are directed to patent-eligible subject matter under 35 U.S.C. § 101. One must first decide whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to "significantly more" than the judicial exclusion. But generic computer implementation of an otherwise abstract process does not qualify as significantly more. On the other hand, a claimed improvement to a computer or technological process is typically patent-eligible.
Here, the Federal Circuit rapidly disposed of the matter:
[W]e conclude the district court did not err in finding claims 25 and 33 of the '533 patent ineligible under 35 U.S.C. § 101. The district court correctly found that the claims were directed to the abstract idea of backing up data, and that the claim limitations lacked an inventive concept as they invoke conventional computer components that do not function in combination in an inventive manner.
Once again, we have a § 101 case in which a broad, vague claim that likely would not be novel or non-obvious is disposed of under § 101 instead of § 102 or § 103. The District Court even performed a de facto prior art analysis, stating that "[i]t is undisputed that institutions have long backed up data in general, and the specification even describes long-practiced methods of backing up digital data." Nonetheless, despite IV's contention that the specification of the '533 patent described an improvement over the prior art, the District Court observed that "[t]he claims do not provide any concrete details that limit the claimed invention to a specific solution to the problem of remote back-up of digital data." In other words, if there is a disclosed improvement, it is not in the claims. Regarding sending the spoof packet, Symantec offered evidence that such an activity was conventional, and IV did not make a rebuttal.
Recently, the Federal Circuit's Berkheimer v. HP Inc. case held that when there is a material issue of fact over whether claims provide such an improvement, summary judgment is improper. But here, the Court did not find such an issue:
Our recent decision in Berkheimer v. HP Inc. does not compel a different conclusion. IV filed a notice of supplemental authority arguing that Berkheimer compels reversal and remand of the district court's judgment because "there is a genuine issue of material fact as to whether the '533 claims improve remote data mirroring in 'an inventive manner' or perform 'well-understood, routine, and conventional activities to a skilled artisan.'" But, as the district court explained in detail, "the claims invoke conventional computer components that do not supply an inventive concept," and "[t]he specification confirms that the individual components . . . are conventional, generic, and operate as expected." Moreover, the district court found that IV failed to offer evidence to show that the order of the steps was unconventional. IV also acknowledged at oral argument that it did not offer expert testimony to show the lack of conventionality of its components.
As such, the Federal Circuit concluded that the District Court did not err in finding the '533 patent invalid under § 101. And as an aside, anyone who thinks that backing up their data is an abstract concept should keep that in mind when their primary computer is lost, stolen, or crashes.
Intellectual Ventures I LLC v. Symantec Corp. (Fed. Cir. 2018)
Nonprecedential disposition
Panel: Circuit Judges O'Malley, Schall, and Wallach
Opinion by Circuit Judge O'Malley
