Result-Oriented Patent Claims Dismissed Under Rule 12(b)(6) As Being Ineligible

In a precedential opinion analyzing eligibility of software and web-based patents, the US Court of Appeals for the Federal Circuit affirmed the district court's dismissal of a patent infringement complaint in US Patent No. 7,679,637 LLC v. Google LLC. The Court examined key issues in patent eligibility under 35 U.S.C. § 101, particularly for web conferencing-related software claims that recite functional or result-oriented language.

US Patent No. 7,679,637 (the '637 patent) covered a web conferencing system with "time-shifting capabilities," whereby a participant could watch a web conference a) in real time, b) with a delay while still in progress, or c) after the web conference had concluded. Participants could also adjust the playback speed of the web conference, and simultaneously view multiple data streams, such as video, shared documents, websites, and chat. In response to allegations that Google infringed many of the '637 patent claims, Google filed an early motion to dismiss the complaint, arguing that the asserted claims were ineligible under Section 101 by reciting an abstract idea with no inventive concept. The district court granted Google's motion and dismissed the case, leading to the appeal.

As with most cases involving subject matter eligibility, the Court applied the two-part test from Alice Corp. v. CLS Bank Int'l, with Alice Step One asking whether the claims are "directed to" an abstract idea, and Alice Step Two asking whether the claims recite an "inventive concept."

Under Alice Step One, the Court found that the claims of the '637 patent were directed to the abstract idea of "allowing asynchronous review of presentations" as a live web conference progresses, rather than reciting a specific technological advancement. The Court emphasized that the claims merely describe the results — what the system does — rather than how those results are achieved in a technical manner. The claims failed to recite any specific technological improvements or novel techniques to accomplish these functions, and this lack of concrete implementation or technical detail pushed the claims into the abstract realm. This follows the trend from the Court that software claims merely reciting end-result, functional language of what an invention does, without a specific technological solution of how to accomplish those results, are likely directed to an abstract idea.

Interestingly, as part of its argument that the '637 patent claims do not merely recite functional language, the patent owner also argued that Google itself relies on similar "functional claiming" for its own web conferencing patents, and therefore concedes that such drafting language is patent-eligible. The patent owner seemed to want the Court to add another step to the Alice analysis that examines a potential infringer's own patent portfolio to understand their opinion regarding eligibility. The Court quickly dismissed that argument, noting that Google's patents were not at issue and not instructive for the Court to determine eligibility of the claims before it.

Moving to Alice Step Two, the Court rejected Appellant's arguments that the claimed combination of a "time-scale modification component" and two client applications running on a computer equated to an "inventive concept." The Court noted that the '637 patent's own specification acknowledged that the claimed client applications and data streams were conventional components operating according to their ordinary functions. Thus, the client applications and time-scale modification component were viewed as conventional, well-understood, routine components in the technical field. Since these two elements simply executed the abstract idea using known techniques without providing a technical solution that meaningfully transformed the abstract idea, they failed to qualify as an "inventive concept" under Alice Step Two.

This decision is yet another reminder that patent claims cannot merely recite abstract goals of what the invention "does," but rather should recite "how" those results are accomplished. As courts continue to refine patent eligibility standards in a world dominated by software and digital technologies, this precedential decision will likely serve as another touchstone for assessing the strength of software patents and the risks inherent in asserting or defending them.

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