Fed. Cir. strikes down web-conferencing patent for lack of patentable subject matter

The Fed. Cir. today struck down a web-conferencing patent for failure to recite patent eligible subject matter under 35 U.S.C. § 101: US Patent No. 7,679,637 v. Google. This is not a typo; the name of the plaintiff-appellant is this patent number. Overall, there is nothing surprising in the case, but the court had a couple of good tips for us.

The patent functionally claims a web-conferencing system where an observer can view the real-time presentation or previously presented parts of the presentation. This “allowing asynchronous review of presentations” was found to be the abstract idea. Indeed, the claims did not recite how the claimed results are achieved. The court framed the step one inquiry as whether the claims focus on improvements to the computer’s capabilities or instead on an abstract idea. Interestingly, the court stated that “the claim itself need not explicitly recite the [technological] improvement” and mentioned three analytical approaches: (1) reviewing the specification to understand the problem facing the inventor and what the invention is; (2) considering whether the claims recite any technological improvement; and (3) determining whether the specification and claims “describe how [the] improvement was accomplished.” This is helpful.

Because the claims were result oriented (failing to explain how the results are achieved) and because the specification failed to disclose any improvement to the underlying components, the court found the claims failed Alice’s step one. I note an interesting argument that the appellant made at step one. It argued that the defendant-appellee had functional claims in its patent portfolio as kind of an admission that functional claiming is okay. The court wasn’t having it, stating that this issue is not before them and has “no bearing on our analysis.”

The contested claims failed Alice’s step two because “the specification makes clear, the claimed client applications are conventional, well-known components, operating according to their ordinary functions….”