Case 1:18-cv-00366-WCB Document 61 Filed 02/04/19 Page 1 of 44 PageID #: 1261
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`BRITISH TELECOMMUNICATIONS PLC,
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`
`Plaintiff,
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`v.
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`
`
`IAC/INTERACTIVECORP, MATCH
`GROUP, INC., MATCH GROUP, LLC, and
`VIMEO, INC.,
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`
`Defendants.
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`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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` Civil Action No. 18-366-WCB
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`MEMORANDUM OPINION & ORDER
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`BACKGROUND
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`Plaintiff British Telecommunications plc (“British Telecom”) filed its first amended
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`complaint in this action on June 8, 2018, against IAC/InterActiveCorp (“IAC”), Match Group, Inc.
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`(“MGI”), Match Group, LLC (“MGL”), and Vimeo, Inc. (“Vimeo”). The first amended complaint
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`alleged that the named defendants infringed six patents owned by British Telecom: U.S. Patent
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`Nos. 6,240,450 (“the ’450 patent”), 6,397,040 (“the ’040 patent”), 6,578,079 (“the ’079 patent”),
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`7,243,105 (“the ’105 patent”), 7,974,200 (“the ’200 patent”), and 9,177,297 (“the ’297 patent”).
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`Dkt. No. 17, at 24–25. British Telecom accused IAC and Vimeo of infringing the ’450 patent, the
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`’079 patent, and the ’200 patent. Id. at 29, 38, 48. It accused IAC, MGI, and MGL of infringing
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`the ’040 patent, the ’105 patent, and the ’297 patent. Id. at 33, 42, 52.1
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`1 Vimeo and MGL both interpreted the first amended complaint as accusing each of the
`defendants of infringing all six patents. British Telecom clarified that “Counts II [the ’040 patent],
`IV [the ’105 patent], and VI [the ’297 patent] do not allege infringement by Vimeo” and that
`“Counts I [the ’450 patent], III [the ’079 patent], and V [the ’200 patent] do not allege infringement
`by MGL.” Dkt. No. 28, at 1; Dkt. No. 32, at 1. Therefore, Vimeo’s motion to dismiss with respect
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`VIMEO/IAC EXHIBIT 1003
`VIMEO ET AL., v. BT, IPR2019-00833
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`Case 1:18-cv-00366-WCB Document 61 Filed 02/04/19 Page 2 of 44 PageID #: 1262
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`Vimeo filed a motion under Fed. R. Civ. P. 12(b)(6) to dismiss British Telecom’s first
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`amended complaint. Dkt. No. 22. In that motion, Vimeo argues that British Telecom “has not
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`pleaded facts demonstrating that Vimeo has infringed [the ’200 patent], as [British Telecom] has
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`failed to allege that Vimeo’s video service reads on a critical claim element.” Dkt. 23, at 1. Vimeo
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`also seeks dismissal of the claims predicated on the ’450 patent and the ’079 patent on the ground
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`that those patents are directed to patent-ineligible subject matter. Id.
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`MGL also filed a motion under Rule 12(b)(6) to dismiss British Telecom’s first amended
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`complaint. Dkt. No. 24. MGL argues that British Telecom “has not pleaded facts that make
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`infringement plausible” under the ’105 patent. Dkt. No. 25, at 1. MGL also argues that the ’040
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`patent and the ’297 patent are directed to patent-ineligible subject matter. Id.
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`I. The ’105 patent and the ’200 patent
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`DISCUSSION
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`Vimeo and MGL have filed motions to dismiss the claims of the amended complaint
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`directed to the ’105 and ’200 patents, respectively. They argue that the complaint fails to allege
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`facts sufficient to satisfy the pleading requirements set forth by the Supreme Court in Bell Atlantic
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`Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009), and the line
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`of cases following Twombly and Iqbal.
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`
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`to the ’040 patent, the ’105 patent, and the ’297 patent, and MGL’s motion to dismiss with respect
`to the ’450 patent, the ’079 patent, and the ’200 patent, are denied as moot.
`British Telecom has yet to identify the particular patent claims it intends to assert against
`the defendants. However, the infringement chart attached to the amended complaint identifies
`certain claims as illustrative of the defendants’ alleged infringement. See Dkt. No. 17-1, Exhs. G-
`L. The Court focuses on those claims in this order.
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`In considering whether a complaint should be dismissed for failure to state a claim upon
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`which relief can be granted, courts “accept all factual allegations as true, construe the complaint
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`in the light most favorable to the plaintiff, and determine whether, under any reasonable reading
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`of the complaint, the plaintiff may be entitled to relief.” Pinker v. Roche Holdings Ltd., 292 F.3d
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`361, 374 n.7 (3d Cir. 2002). Nonetheless, as the Supreme Court has made clear, the complaint
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`must contain “enough facts to state a claim to relief that is plausible on its face.” Twombly, 550
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`U.S. at 570. “Determining whether a complaint states a plausible claim for relief will . . . be a
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`context-specific task that requires the reviewing court to draw on its judicial experience and
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`common sense.” Iqbal, 556 U.S. at 679.
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`Importantly, it is not necessary for the plaintiff to plead “specific facts.” Erickson v.
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`Pardus, 551 U.S. 89, 93 (2007); see Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256,
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`1260 (Fed. Cir. 2018). As this court has explained:
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`So long as plaintiffs do not use “boilerplate and conclusory
`allegations” and “accompany their legal theory with factual
`allegations that make their theoretically viable claim plausible,” the
`Third Circuit has held “pleading upon information and belief [to be]
`permissible [w]here it can be shown that the requisite factual
`information is peculiarly within the defendant's knowledge or
`control.”
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`DermaFocus LLC v. Ulthera, Inc., 201 F. Supp. 3d 465, 468 (D. Del. 2016)
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`
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`(quoting McDermott v. Clondalkin Grp., Inc., 649 Fed. Appx. 263, 267–68 (3d Cir.
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`2016). And in the context of patent litigation, “it is logical to presume that a
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`defendant has greater access to, and therefore, more information [than the plaintiff]
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`about its accused method.” DermaFocus, 201 F. Supp. at 469.
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`A. The ’105 Patent
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`The ’105 patent is entitled “Method and Apparatus for Automatic Updating of User
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`Profiles.” The patent is directed to “a method and apparatus for updating user profiles based upon
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`personalized reasoning about user activity.” ’105 patent, col. 1, ll. 9-11. The invention employs
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`an inference engine that infers and outputs updates to a user profile according to a first set of rules
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`and event statistics. Id. at col. 4, ll. 35-60. The first set of rules is weighted according to a set of
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`personalized rule weightings, which are generated according to a second set of rules and user
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`preference data. Id. at col. 5, ll. 8-34. According to the inventor, this two-rule method for updating
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`user profiles was an improvement over prior art systems, which updated user profiles, but
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`“offer[ed] little in the way of user control and personalization of the profile update process itself.”
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`Id. at col. 2, ll. 23-24. Illustrative claim 10 is a method claim, which provides as follows:
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`A method of updating a user profile, the user profile being suitable for use in
`providing customized services to a respective user, the method comprising:
`(i) storing a first set of rules;
`(ii) generating a set of personalized rule weightings according to a second set
`of rules and with reference to a set of user preference data;
`(iii) receiving event statistics relating to a user's activity; and
`(iv) applying an inference engine to infer and output at least one update to a
`profile for the user according to said first set of rules weighted according to
`said generated set of personalized rule weightings, using said received event
`statistics.
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`The first amended complaint states that MGL, together with IAC and MGI, “directly
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`infringed, actively induced the infringement of, and/or contributorily infringed the . . . ’105 patent
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`by providing infringing products/services under the name of ‘Daily Matches’ for Match.com,” an
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`on-line dating service. Dkt. No. 17, at 43; see Dkt. No. 32, at 8. Accompanying the first amended
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`complaint is an infringement chart that includes factual allegations discussing how “Daily
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`Matches” practices each element of claim 10 of the ’105 patent. Dkt. No. 17, Ex. J; see
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`DermaFocus, 201 F. Supp. at 469.
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`The first amended complaint and accompanying infringement chart present a plausible
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`theory of infringement. British Telecom specifically describes how MGL’s product meets each
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`limitation in claim 10, using photographs of the product and quoting language from Match.com’s
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`website. See Disc Disease, 888 F.3d at 1260 (finding Plaintiff’s complaint sufficient because it
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`“specifically identified the three accused products—by name and by attaching photos of the
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`product packaging as exhibits—and alleged that the accused products meet ‘each and every
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`element of at least one claim.’”). For example, the infringement charts allege that: “[a] first set of
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`rules is based on information in the user’s profile”; “Match.com generates personalized weightings
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`for the users according to a second set of rules and with reference to a set of user preference data”;
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`“Match.com receives event statistics relating to the user’s activity when the user rates other users”;
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`and “Match.com updates the criteria it uses for matching a particular user (in the user’s profile)
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`with other users based on the [user’s preference and activity].” Dkt. No. 17, Ex. J. These
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`allegations are sufficient to satisfy the pleading requirements set forth in the Twombly/Iqbal line
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`of cases.
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`MGL argues that the first amended complaint “contains nothing showing that two sets of
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`rules are present in the accused Match.com service . . . [and] merely shows that the Match.com
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`service utilizes an algorithm that learns user preferences from user ratings of proposed matches.”
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`Dkt. No. 25, at 7. However, MGL’s argument is based on a more rigorous pleading standard than
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`the law imposes. That is especially clear in light of the fact that, as appears to be the case here,
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`MGL’s “Daily Match” algorithm is not in the public domain. MGL fails to demonstrate how
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`British Telecom could have determined whether, for example, MGL’s product contains
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`“IF/THEN” rule statements that “are the hallmarks of the ’105 Patent.” Id. at 8; see Dkt. No. 34,
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`at 3 (British Telecom’s claim charts “provide no basis to infer that the Match.com service employs
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`any of the ’105 Patent’s hallmark claim elements: multiple rule sets . . . .”).
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`MGL also argues that “British Telecom equates the claims’ rules with Match.com’s
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`preference data.” Dkt. No. 25, at 9. According to MGL, that is inappropriate, because “as a matter
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`of plain English and common sense, user ‘preferences’ are not ‘rules.’” That argument
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`misconstrues British Telecom’s infringement contentions. The infringement contentions clearly
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`differentiate between rules and preferences. See Dkt. No. 17, Ex. J, at 17 (“first set of rules is
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`based on . . . user preferences” (emphasis added)); id. at 18 (“Match.com generates personalized
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`weightings for the users according to a second set of rules and with reference to a set of user
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`preference data” (emphasis added)).
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`Implicit in MGL’s argument regarding rules and preferences is a second argument—that
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`in order to fall within the claims of the ’105 patent, rules cannot be based on or set by user
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`preferences. See Dkt. No. 25, at 9. However, that argument is directed to an issue of claim
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`construction that is not suitable for resolution at the motion-to-dismiss stage of this case.
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`Therefore, MGL’s motion to dismiss with respect to the ’105 patent, is denied.
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`B. The ’200 Patent
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`The ’200 patent is entitled “Transmitting and Receiving Real-Time Data.” The patent is
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`directed to “a method of providing a streaming video service to a [video viewer] across [the
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`Internet] whilst reducing the start-up delay usually associated with preparing a buffer of data.” See
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`’200 patent, col. 1, ll. 14-17. At the time of the invention, commercial streaming technologies
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`constructed “a large buffer (5-30 seconds) before starting to playback video material.” Id. at col.
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`1, ll. 36-38. To reduce start-up delays, the patent contemplates first transmitting lower quality data
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`from a video streamer to a video viewer. See id. at col. 2, ll. 31-37; id. at col. 5, ll. 11-15. The
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`lower quality data can be transmitted at a faster rate than the video viewer consumes the data, such
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`that the excess data builds a buffer at the video viewer while permitting immediate data
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`consumption. See id. at col. 5, ll. 19-26. When the build-up of excess data reaches a predetermined
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`level at the buffer, a command is sent to the video streamer, which switches the transmission of
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`data from low quality data to high quality data. Id. at col. 5, ll. 27-42. In addition to reducing
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`start-up delays, the buffer enables user-friendly video streaming despite variations in network
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`conditions, “which might otherwise have a detrimental effect on the overall perceived quality of
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`the media.” Id. at col. 4, ll. 58-62; col. 6, ll. 15-17. Illustrative claim 4 is a method claim, which
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`provides as follows:
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`A method of operating a communication apparatus comprising a data sender, a
`data presentation device having a store, and a network connecting said data sender
`and said data presentation device, said method comprising:
`operating said data sender to transmit a first plurality of first-encoding-rate
`data packets encoded at a first encoding rate to said data presentation device,
`wherein said first plurality of first-encoding-rate data packets are
`transmitted at a first transmission rate which is higher than said first
`encoding rate of said first-encoding-rate data packets;
`operating said data presentation device to:
`receive said first plurality of first encoding rate data packets into said store;
`read out said received first-encoding-rate data packets from said store at a
`data rate equal to said first encoding rate of said first-encoding-rate data
`packets for decoding so as to present to a user at a first level of quality,
`wherein the removing of said first-encoding-rate data packets from said
`store is initiated when said first-encoding-rate data packets first arrive at
`said store;
`on said store being filled with data packets to a predetermined level, sending
`an indication to said data sender that said predetermined level has been
`reached;
`operating said data sender, on receipt of said indication from said data
`presentation device, to transmit a second plurality of second-encoding-rate
`data packets encoded at a second encoding rate to said data presentation
`device, wherein said second plurality of second-encoding-rate data packets
`are transmitted at a second transmission rate which is higher than said first
`transmission rate; and wherein said second encoding rate is higher than said
`first encoding rate;
`operating said data presentation device to:
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`receive said second plurality of second-encoding-rate data packets into said
`store;
`read out said second-encoding-rate data packets from said store at a data rate
`equal to said second encoding rate of said second-encoding-rate data
`packets for decoding, so as to present to said user at a second level of
`quality, wherein said second level of quality is higher than said first level of
`quality.
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`The first amended complaint alleges that IAC and Vimeo have “directly infringed, actively
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`induced the infringement of, and/or contributorily infringed the [] ’200 patent by the adaptive
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`streaming product/service provided in at least the Vimeo and Vimeo Live products/services.” Dkt.
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`No. 17, at 48. The infringement chart accompanying the first amended complaint includes factual
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`allegations discussing how Vimeo’s adaptive streaming product/service practices every element
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`of claim 4 of the ’200 patent. Dkt. No. 17, Ex. K.
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`Vimeo argues that, according to British Telecom’s own infringement chart, not all of the
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`elements of claim 4 are met by Vimeo’s system, and that the complaint therefore does not plausibly
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`allege infringement. See Dkt. No. 23, at 7; Dkt. No. 30, at 4. In particular, Vimeo focuses on the
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`following claim element: “on said store being filled with data packets to a predetermined level,
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`sending an indication to said data sender that said predetermined level has been reached.” ’200
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`patent, claim 4. Vimeo states that the industry standard protocol by which its streaming system
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`operates does not “send an indication” to a data sender that a predetermined buffer level at the
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`client device (i.e., said predetermined level) has been reached. Dkt. No. 23, at 7. Rather, once the
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`buffer at the client device is filled to a predetermined level, the client device makes a “GET
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`request.” Id. at 8. The “GET request” selects the next segment of data from the data sender to be
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`downloaded to the client device. Id. According to Vimeo, this selection process excludes sending
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`any type of buffer level indication to the data sender. See id. at 7 (“[C]lient devices select among
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`different coded representations of video, called ‘segments,’ without transmitting any such
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`indication.”); id. at 7–8 (“This is a selection operation, not a transmission operation” (emphasis
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`in original)); id. at 8 (“These GET requests are identical to each other in form and function”).
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`British Telecom argues that the infringement chart shows that a “GET request” based on
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`buffer level is equivalent to “an indication.” Dkt. No. 28, at 9. It characterizes Vimeo’s arguments
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`as “fact issues and claim construction issues.” Id. According to British Telecom, these issues
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`include: “(i) the construction of the term ‘an indication,’ (ii) whether a ‘GET request’ is ‘an
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`indication’ as properly construed, and (iii) the factual circumstances under which a presentation
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`device transmits a ‘GET request’ for a high-quality video stream.” Id.
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`In its reply brief, Vimeo argues that “GET requests” cannot be “indications” because
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`“Vimeo’s servers [do not] respond to a GET request as required by the claims by providing a video
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`stream at a higher quality.” Dkt. No. 30, at 3. Instead, according to Vimeo, “a Vimeo server
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`responds to a GET request only by providing the requested segment.” Id.
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`Reading the first amended complaint and the attached infringement chart in the light most
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`favorable to the plaintiff, the Court finds it plausible that a “GET request” meets the “indication”
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`limitation, and that granting a motion to dismiss based on the defendant’s argument regarding that
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`limitation would be improper. It is unclear why, at least at the current stage of the case, a “GET
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`request” does not (at least implicitly) indicate to the data sender, when the sender selects a data
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`segment, that a predetermined buffer level has been reached. It is also unclear how Vimeo’s
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`argument in its reply brief regarding video stream quality justifies dismissal. Vimeo fails to
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`articulate how “Vimeo’s servers [do not] respond to a GET request as required by the claims by
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`providing a video stream at a higher quality” if a “GET request” selects a data segment that
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`provides a video stream at a higher quality than the previous segment. Vimeo’s motion to dismiss,
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`with respect to the ’200 patent, is therefore denied.
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`II. The ’297 patent, the ’040 patent, the ’450 patent, and the ’079 patent
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`A. The Alice Two-Step Test
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`The framework for analyzing the issue of patentable subject matter under 35 U.S.C. § 101
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`is well settled. The Supreme Court’s decision in Alice Corp. v. CLS Bank International, 573 U.S.
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`208 (2014), established a two-step test for determining whether a patent is directed to an
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`unpatentable idea. First, the court must determine “whether the claims at issue are directed to a
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`patent-ineligible concept,” such as an abstract idea. 573 U.S. at 218. Second, if the claims are
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`directed to an abstract idea, the court must decide whether there is an “inventive concept” in the
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`claims at issue. The Supreme Court characterized an “inventive concept” as “an element or
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`combination of elements that is ‘sufficient to ensure that the patent in practice amounts to
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`significantly more than a patent upon the [ineligible concept] itself’”; the presence of an “inventive
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`concept,” the Court explained, is enough to “‘transform the nature of the claim’ into a patent-
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`eligible application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc. 566 U.S.
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`66, 72–73, 78 (2012)).
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`The first step of the two-step Alice analysis requires the court to examine the “focus” of
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`the claim, i.e., its “character as a whole,” in order to determine whether the claim is directed to an
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`abstract idea. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018); Internet
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`Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). The second step, if
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`reached, requires the court to “look[] more precisely at what the claim elements add—specifically,
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`whether, in the Supreme Court’s terms, the claims identify an ‘“inventive concept”’ in the
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`application of the ineligible matter to which (by assumption at step two) the claim is directed.”
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`Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citations omitted).
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`1. Step 1: Abstract Idea
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`Defining an “abstract idea,” as that term is used in section 101 jurisprudence, has not
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`proved to be a simple task. Neither the Supreme Court nor the Federal Circuit has ventured a
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`single, comprehensive definition. See Alice, 573 U.S. at 221 (“[W]e need not labor to delimit the
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`precise contours of the ‘abstract ideas’ category in this case.”); Bilski v. Kappos, 561 U.S. 593,
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`621 (2010) (Stevens, J., concurring in the judgment) (“The Court . . . never provides a satisfying
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`account of what constitutes an abstract idea.”); Elec. Power Grp., 830 F.3d at 1353 (“We need not
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`define the outer limits of ‘abstract idea’”); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334
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`(Fed. Cir. 2016) (“The Supreme Court has not established a definitive rule to determine what
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`constitutes an ‘abstract idea’ sufficient to satisfy the first step of the Mayo/Alice inquiry. . . .
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`Rather, both this court and the Supreme Court have found it sufficient to compare claims at issue
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`to those claims already found to be directed to an abstract idea in previous cases.”). Rather than a
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`unitary test, what has emerged from the section 101 cases is a group of related principles that can
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`be applied in gauging whether or not a patent claim is directed to an abstract idea. They include
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`the following:
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`First, the courts have characterized “method[s] of organizing human activity” as abstract.
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`See Alice, 573 U.S. at 220; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1285 (Fed. Cir.
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`2018). In particular, the courts have identified fundamental economic practices that have long
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`been prevalent in our system of commerce as abstract ideas. Applying that principle in the field
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`of computers and telecommunications, the courts have held that claims directed to simply
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`implementing such economic practices on a computer are not patent-eligible. See Alice, 573 U.S.
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`at 217–21; Bilski, 561 U.S. at 611; BSG, 899 F.3d at 1285 (“If a claimed invention only performs
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`an abstract idea on a generic computer, the invention is directed to an abstract idea at step one” of
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`Alice.). Nor does the fact that a computer can perform such operations more rapidly and efficiently
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`make an abstract idea any less abstract or any more patent-eligible. See, e.g., RecogniCorp, LLC
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`v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017); FairWarning IP, LLC v. Iatric Sys., Inc.,
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`839 F.3d 1089, 1097 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
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`1307, 1315 (Fed. Cir. 2016); Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
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`1336, 1345 (Fed. Cir. 2013); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 717 (Fed. Cir. 2014)
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`(“Any transformation from the use of computers or the transfer of content between computers is
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`merely what computers do and does not change the analysis.”).
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`Second, as applied to computer applications, the courts have looked to whether the claim
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`in question is directed to an improvement in computer technology as opposed to simply providing
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`for the use of a computer to perform “economic or other tasks for which a computer is used in its
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`ordinary capacity.” Enfish, 822 F.3d at 1336. Where the claims at issue provide for an
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`improvement in the operation of a computer, such as a new memory system, a new type of virus
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`scan, or a new type of interface that makes a computer function more accessible, the Federal Circuit
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`has found the claims patent-eligible. See Data Engine Techs. LLC v. Google LLC, 906 F.3d 999
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`(Fed. Cir. 2018) (methods for making electronic spreadsheets more accessible); Core Wireless
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`Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1361–63 (Fed. Cir. 2018) (improved display
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`devices); Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018) (novel method of
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`virus scanning); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) (improved
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`computer memory system).
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`Numerous Federal Circuit decisions have drawn the distinction between patent-eligible
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`claims that “are directed to a specific improvement in the capabilities of computing devices,” as
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`opposed to “‘a process that qualifies as an “abstract idea” for which computers are invoked merely
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`as a tool.’” Core Wireless, 880 F.3d at 1361–62 (quoting Enfish, 822 F.3d at 1336); see also
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`McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016); DDR
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`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–58 (Fed. Cir. 2014). In the computer
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`field, this principle has sometimes been described as requiring “a technological solution to a
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`technological problem specific to computer networks.” Amdocs (Israel) Ltd. v. Openet Telecom,
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`Inc., 841 F.3d 1288, 1301 (Fed. Cir. 2016); see also In re TLI Commc’ns LLC Patent Litig., 823
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`F.3d 607, 613 (Fed. Cir. 2016) (“the claims are not directed to a solution to a ‘technological
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`problem’”).
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`Third, in determining whether a particular claim is directed to an abstract idea, courts have
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`focused on whether the claim is purely functional in nature rather than containing the specificity
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`necessary to recite how the claimed function is achieved. The Federal Circuit has focused on the
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`problem of functional claiming in a number of recent section 101 decisions. In those cases, the
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`Federal Circuit, treating the term “abstract” as an antonym of “concrete” or “specific,” has
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`analyzed whether the claims before it are sufficiently concrete or specific to be directed to a patent-
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`eligible process rather than a patent-ineligible result. For example, in SAP America, 898 F.3d at
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`1167, the court asked whether the claim had “the specificity required to transform [it] from one
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`claiming only a result to one claiming a way of achieving it.” To answer that question, the Federal
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`Circuit has directed courts to “look to whether the claims focus on a specific means or method, or
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`are instead directed to a result or effect that itself is the abstract idea and merely invokes generic
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`processes and machinery.” Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d
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`1329, 1337 (Fed. Cir. 2017); McRO, 837 F.3d at 1314 (“We therefore look to whether the claims
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`in these patents focus on a specific means or method that improves the relevant technology or are
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`instead directed to a result or effect that itself is the abstract idea and merely invoke generic
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`processes and machinery.”). Thus, the question in such cases is “whether the claims are directed
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`to ‘a specific means or method’ for improving technology or whether they are simply directed to
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`an abstract end-result.” RecogniCorp, 855 F.3d at 1326.
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`As Judge Chen noted for the Federal Circuit in Interval Licensing LLC v. AOL, Inc., 896
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`F.3d 1335, 1343 (Fed. Cir. 2018), the focus on functionality as a measure of patent eligibility has
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`a long and notable pedigree. Judge Chen cited Wyeth v. Stone, 30 F. Cas. 723 (C.C.D. Mass.
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`1840), as an example of an early expression of some of the policy concerns that underlie the issue
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`of patent eligibility. In that case, Justice Story, riding circuit, presided over a patent infringement
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`suit involving two claims. In one, the patentee claimed a particular apparatus and machinery to
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`cut ice, and in the other the patentee claimed “an exclusive title to the art of cutting ice by means
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`of any power, other than human power.” Id. at 727. Justice Story ruled that the second claim was
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`“utterly unmaintainable,” because it was “a claim for an art or principle in the abstract, and not for
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`any particular method or machinery, by which ice is to be cut.” Id.
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`In Interval Licensing, the Federal Circuit also pointed to the Supreme Court’s nineteenth
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`century decisions in O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853), and Le Roy v. Tatham, 55
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`U.S. (14 How.) 156 (1853), which make similar observations. See Interval Licensing, 896 F.3d at
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`1343; see also Mayo, 566 U.S. at 70. Importantly, in both of those older cases the Court
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`emphasized that a claim to a result, however achieved, is not patentable, and that allowing such a
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`patent would have impermissible preemptive effects. That assessment anticipated the analysis in
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`the Court’s more recent section 101 cases, in which the Court has pointed to concerns about
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`preemption as an important factor driving the Court’s restrictions on claims directed to abstract
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`ideas. Compare Le Roy, 55 U.S. (14 How.) at 175 (“A principle, in the abstract, . . . cannot be
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`patented. . . . A patent is not good for an effect, or the result of a certain process, as that would
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`prohibit all other persons from making the same thing by any means whatsoever.”), with Alice,
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`573 U.S. at 216 (quoting Mayo, 566 U.S. at 85 (“We have described the concern that drives this
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`exclusionary principle as one of pre-emption. . . . We have ‘repeatedly emphasized this . . .
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`concern that patent law not inhibit further discovery by improperly tying up the future use of’ these
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`building blocks of human ingenuity.”)).
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`Based on that analysis and other Federal Circuit decisions to the same effect, the Federal
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`Circuit in Interval Licensing held the representative claim before it, which was directed to what
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`was called an “attention manager” in a computer readable medium, to be patent-ineligible. That
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`was so, the court explained, because the claim recited a “broad, result-oriented” structure, and
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`because “[i]nstead of claiming a solution for producing [a] result, the claim in effect encompasses
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`all solutions.” 896 F.3d at 1345.
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`Other cases from the Federal Circuit have employed the same analysis and applied it to
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`hold claims ineligible under section 101. See Two-Way Media, 874 F.3d at 1337 (“The claim
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`[before the court] requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’
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`‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these
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`results in a non-abstract way.”); Clarilogic, Inc. v. Formfree Holdings Corp., 681 F. App’x 950,
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`954 (Fed. Cir. 2017) (“[A] method for collection, analysis, and generation of information reports,
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`where the claims are not limited to how the collected information is analyzed or reformed,