WASHINGTON – Three indexing software patents allegedly infringed by a Wisconsin-based party supply company are invalid because they only contain abstract ideas, a federal appeals court ruled in an East Texas case earlier this month.
The patents failed both steps in the so-called "Alice/Mayo" test, the industry standard for analyzing inventions under Section 101 of U.S. code, the U.S. Federal Circuit Court of Appeals ruled in a decision handed down Aug. 15.
"If a claimed invention only performs an abstract idea on a generic computer, the invention is directed to an abstract idea at step one," the appeals court decision said. "...We must, therefore, consider whether the focus of the claims is on a specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool."
U.S. Federal Circuit Court of Appeals Judge Todd M. Hughes
The Federal Circuit agreed with an earlier ruling by a Judge Robert W. Schroeder III of the Texarkana Division of the Eastern District of Texas, who granted summary judgment in BSG Tech LLC v. BuySeasons Inc. after finding that plaintiffs' allegations were directed to abstract ideas rather than patentable inventions. The Federal Circuit affirmed the district judge's ruling, affirming that none of the patent claims were eligible under 35 U.S.C. § 101.
Circuit Appeals Court Judge Todd M. Hughes wrote the 18-page decision in which Judge Jimmie V. Reyna and Judge Evan J. Wallach concurred.
BSG Tech filed suit the district court against BuySeasons in May 2016, alleging BuySeasons had infringed upon BSG Tech patents BuySeasons included on its website an index for costumes and costume accessories that allowed users to search BuySeason's database. The following March, Schroeder granted BuySeason's motion to dismiss, converted into a motion for summary judgment, which argued that the BSG Tech patents were invalid under the Alice/Mayo standard.
In its decision on BSG Tech's appeal, the Federal Circuit rule that the patents affect how users interact with the structure of a widely available database structure and that while abstract ideas can be patent eligible, the three BSG Tech patents in the case did not qualify.
"In BSG Tech's view, a claim is not directed to an abstract idea so long as it recites limitations that render it narrower than that abstract idea," the Federal Circuit decision said. "While 'we must be careful to avoid oversimplifying the claims' in determining whether they are directed to an abstract idea, we have never suggested that such minimal narrowing, by itself, satisfies Alice's test."