US Court of Appeals sustains district court ruling granting Google motion to dismiss patent owner’s violation claim

US Court of Appeals sustains district court ruling granting Google motion to dismiss patent owner’s violation claim

The bench maintained that they were directed to the patent-ineligible abstract idea of allowing asynchronous review of presentations

The US Court of Appeals for the Federal Circuit (CAFC) has issued a precedential decision affirming the ruling of a district court, granting Google’s motion to dismiss a patent owner’s infringement suit for failure to state a claim.

The bench of Chief Judge Kimberly Ann Moore, Judge Todd M Hughes and Judge Kara Farnandez Stoll agreed with the district court that the software claims were directed to a patent-ineligible abstract idea.

Earlier, US Patent No. 7,679,637 LLC sued Google in the US District Court for the Western District of Washington for infringing certain claims of its patent, Time-shifted Web Conferencing.’

However, Google dismissed it under the Federal Rule of Civil Procedure 12(b)(6). It maintained that the claims were patent- ineligible under 35 U.S.C. § 101.

However, noting that the claims were directed to the abstract idea of “playing back recorded content,” the district court granted Google’s motion.

Thereafter, the US Patent appealed before the CAFC. It submitted that it was an ‘over-generalization’ of the claims, denoting a ‘specific asserted improvement that allows a presentation to be reviewed asynchronously at the same time.”

But, citing the Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349, 1357 (Fed. Cir. 2023) case, the Court of Appeals held that even if it were to narrow the district court’s claim’s view, they were still directed to “the patent-ineligible abstract idea of allowing asynchronous review of presentations, rather than any specific technological improvement. That’s because they do not ‘describe how the alleged goal of [asynchronous review] is achieved.”

The CAFC observed the claim language at step one of the Alice-Mayo framework. It stated that they denoted what the claims ‘did’, but not ‘how’ it was done. It did not comprise a “specific technological improvement discernible to a skilled artisan from the patent or the prosecution history.”

On the patent owner’s submission that the claims “expressly explain how the systems need to be set up to accomplish the improvement,” the Appeals Court stated, “They do not explain how the client applications achieve the recited manipulation of the data streams to enable asynchronous review.”

The CAFC added that the written description did not provide any greater insight, and instead “suggests the invention is nothing more than the abstract idea of applying known time-shifting functions to web-conferencing systems to solve ‘great inefficiencies’ resulting from participants waiting for others to join a presentation or from participants missing part of a presentation.”

The judgment differed from the Contour IP Holding LLC v. GoPro, Inc. case, in which the claims disclosed “improving POV camera technology through specific means of generating high and low-quality video streams in parallel and transferring a low-quality video stream to a remote device.”

However, the present case was more like the Hawk Technology Systems, where the Court of Appeals approved the district court’s finding that Hawk’s U.S. Patent No. 10,499,091, titled ‘high-quality, reduced data rate streaming video product and monitoring system’, should be dismissed for failure to state a claim because the patent was invalid.

The Appeals Court held the claims involving the manipulation of multiple data streams. Adding, “It failed to recite a specific solution to make the alleged improvement - conserving bandwidth while preserving quality - ‘concrete’ and were recited at such a level of result-oriented generality that those claims amounted to a mere implementation of an abstract idea.”

The US Patent further argued that Google used ‘functional claiming’ in its own video conferencing patents and therefore “necessarily believes this approach to claim drafting does not result in subject matter ineligible claims.”

At this, the CAFC reasoned, “The subject matter eligibility of Google’s patent claims is not before us and has no bearing on our analysis of the ’637 patent.”

Judge Moore added, “We reject the notion that the mere existence of factually distinguishable Google-owned patents somehow amounts to a sweeping concession by Google that all patents involving functional claiming approaches are necessarily patent-eligible.”

While moving to step two of Alice-Mayo, the patent owner contended that the district court overlooked the two inventive concepts contained in the claims:

(1) A two-client application system allowing for the manipulation of multiple data streams.

(2) A time-scale modification component.

At this, the bench of the Court of Appeals retorted that neither concept transformed the claims into something that was patent eligible. Stating that the patent owner’s arguments repeated its step one assertions, the judges held, “The claimed client applications are conventional, well-known components, operating according to their ordinary functions to manipulate conventional data streams.”

While not giving up, the patent owner furthered that the district court improperly decided patent eligibility at the motion to dismiss stage. It should have been allowed to amend its complaint.

The CAFC, however, held that the patent owner made no factual allegations that would preclude dismissal. The judges said, “No amendment to the complaint can alter what the ’637 patent itself states regarding the conventionality of the client applications, data streams, and time-scale modification components discussed in the eligibility analysis.”

Thus, the Appeals Court dismissed the patent owner’s argument that Google’s motion to dismiss should have been treated as a summary judgment motion because Google relied on facts outside the complaint to establish what was well-known, routine and conventional and because the district court should have conducted claim construction before the dismissal.

The CAFC maintained, “The district court was clear it did not rely on any extra-pleading materials” in granting the motion to dismiss. The claim construction was not necessary because the patent owner “never proposed any constructions or explained how a proposed construction would change the patent eligibility analysis,” the judges said.