In the 10 years since the U.S. Supreme Court's landmark decision in Alice Corp. v. CLS Bank International, lack of subject matter eligibility under Title 35 of the U.S. Code, Section 101, has become the first line of defense in patent litigation, especially in the software industry.[1]
Unlike other invalidity defenses, Section 101 can be raised on a motion to dismiss, giving defendants an opportunity to dispose of a case in its entirety before incurring the significant costs of discovery.
Among the multitude of software-related claims courts have wiped out over the last several years for lack of subject matter eligibility, the U.S. Court of Appeals for the Federal Circuit had issued several decisions indicating that claims directed to improved user interfaces are patent eligible.
However, that apparent safe haven may no longer be so secure.
Specifically, in Broadband iTV Inc. v. Amazon.com Inc. in September,[2] the Federal Circuit affirmed a finding on summary judgment that claims concerning improved electronic programming guides for televisions were directed to patent-ineligible subject matter, notwithstanding prior decisions finding improved user interface claims patent eligible.
This article summarizes the Federal Circuit's decision in Broadband iTV and prior decisions, and outlines some takeaways for parties involved in software patent disputes.
District Court Proceedings
In October 2020, Broadband iTV filed an action against several Amazon entities in the U.S. District Court for the Western District of Texas alleging infringement of five U.S. patents, broken down into two categories: the '026 patent family, consisting of U.S. Patent Nos. 10,028,026, 9,648,388 10,536,750 and 10,536,751; and U.S. Patent No. 9,973,825.[3]
The '026 patent family sought to improve existing television program guides for use with video on demand by automating the creation of a hierarchically arranged, template-based program guide.[4]
Similarly, the '825 patent sought to improve electronic programming guides by adjusting the order of categories based on a user's viewing history, which, in turn, reduces the number of key presses needed for a viewer to reach their desired video program.[5]
In June 2022, Amazon moved for summary judgment that each asserted claim was ineligible under Section 101.[6] The district court granted Amazon's motion.[7]
Federal Circuit Decision
Applying the two-step analysis set forth by the Supreme Court in Alice,[8] the Federal Circuit affirmed the district court's determination that all asserted claims were directed to ineligible subject matter.
With respect to the '026 patent family, the Federal Circuit noted that the claims recite "an 'electronic program guide' that is automatically created using 'metadata,'" and that the metadata "determines the 'respective hierarchical location of a respective title of the video content within the electronic program guide to be displayed.'"[9]
The Federal Circuit thus determined that the claims were directed to "receiving metadata and organizing the display of video content based on that metadata."[10] The Federal Circuit held that was an abstract idea, citing prior cases finding that claims directed to "receiving and displaying information" and "organizing information based on classification information" were directed to abstract ideas.[11]
With respect to the '825 patent, the Federal Circuit noted that the claims recited, in an abstract manner, the functions of "'maintaining ... a usage history database,' using a 'Log- In step' to track an 'individual viewer's consumption,' and 'generat[ing] ... viewer- individualized electronic program guides,'" without explaining how to perform such functions.[12]
Based on its analysis, the Federal Circuit determined that the claims were directed to the abstract idea of "collecting and using viewing history data to recommend categories of video content."[13] The Federal Circuit explained that this idea was nothing more than a type of targeted advertising, which the Federal Circuit has repeatedly found to be abstract."[14]
The Federal Circuit further agreed with the district court that the asserted claims included no inventive concepts at Step 2 of the Alice analysis because the claim elements Broadband iTV relied on were simply the abstract idea itself or conventional features.[15]
Accordingly, the Federal Circuit affirmed the district court's ineligibility determination.
Divergence from Prior Federal Circuit Framework for Analyzing User Interface Claims?
Core Wireless and Data Engine Cases Regarding Improved User Interfaces
Of particular interest in this case is the Federal Circuit's apparent divergence from its recent trend of finding claims directed to improved user interface technology patent eligible.
Specifically, the Federal Circuit rejected Broadband iTV's attempted reliance on its prior decisions in Core Wireless Licensing S.A.R.L. v. LG Electronics Inc. in 2018[16] and Data Engine Technologies LLC v. Google LLC in 2018,[17] in which it found that claims directed to user interface technology were patent eligible under Section 101.
In Core Wireless, the claims at issue were directed to "improved display interfaces, particularly for electronic devices with small screens like mobile telephones."[18] The claims included an application summary window in the user interface that displayed a limited list of data offered within the applications from which a user could select available data using fewer steps than with conventional user interfaces.[19]
According to the Federal Circuit, the claims were therefore "directed to an improvement in the functioning of computers, particularly those with small screens," and not directed to an abstract idea.[20]
In Data Engine, the claims at issue were directed to a "notebook-tabbed interface" that allowed users to "easily navigate through three-dimensional electronic spreadsheets."[21]
The Federal Circuit held the claims were not "simply directed to displaying a graphical user interface or collecting, manipulating, or organizing information to improve navigation through three-dimensional spreadsheets," but rather recited "a specific structure (i.e., notebook tabs) within a particular spreadsheet display that performs a specific function (i.e., navigating within a three-dimensional spreadsheet)."[22]
Accordingly, the Federal Circuit found the claims were not directed to an abstract idea.
In Broadband iTV, however, the Federal Circuit rejected the patentee's assertion that Core Wireless and Data Engine support the patent eligibility of its claims, despite recognizing that the claims of Broadband iTV's '026 patent family "are directed to a program guide, which is a type of user interface,"[23] and that the claims of the '825 patent "involve a user interface" and are "directed to reordering content within a user guide based on viewing history."[24]
With respect to the claims of the '026 patent family, the Federal Circuit explained that "the fact that the claims involve a user interface does not automatically put the claims in the same category as Core Wireless and Data Engine," because those cases further "require an improved structure or function that is missing here."[25]
The Federal Circuit rejected Broadband iTV's argument that the claimed templates provided specific structure as in Core Wireless and Data Engine, and instead maintained that despite the fact that the claims "recite a 'templatized' video-on-demand display that consists of three layers, the use of templates to create the electronic programming guide is not the claimed advance."[26]
In the Federal Circuit's view, the claims were instead directed to "receiving metadata and organizing the display of video content based on that metadata," and the "claimed templates themselves do not provide a technological solution or improve any computer- related function."[27]
With respect to the '825 patent claims, the Federal Circuit gave even shorter shrift to Broadband iTV's attempted reliance on Core Wireless and Data Engine, simply stating that "merely identifying a user interface does not invoke" those cases.[28]
Rather, the Federal Circuit indicated those claims "are directed to reordering content within a user guide based on viewing history, which does not rise to a technological solution to a technological problem."[29]
Tension Between Broadband iTV and Prior Cases
Despite the Federal Circuit's explanation, the improved user interfaces at issue in Broadband iTV appear at first blush to be very similar to those found patent eligible in Core Wireless and Data Engine.
Indeed, the claims of the '026 patent recite an interface that involves drill-down navigation through hierarchically arranged displays that are automatically generated using multilayered "templates." As urged by Broadband iTV in its appeal briefing, like the interfaces at issue in Core Wireless and Data Engine,
the hierarchically arranged, layered, and content-provider-customized displays make it easier for viewers to navigate vast content libraries and to identify content of interest, just as the spreadsheet tabs in Data Engine made it easier to navigate spreadsheets … and the "application summary window" in Core Wireless made it easier to view data on a small screen.[30]
And, the claims of the '825 patent recited an improved user interface that, as explained by Broadband iTV, "includes a log-in screen for identifying the current 'logged on' user ... and 'viewer-individualized' 'display[s]' of content listings, wherein the hierarchical categories in each display are 'reorder[ed]' based on the predicted 'relevance' of each to the logged-in viewer."[31]
In fact, the problem solved in the '825 patent seems strikingly similar to the problem addressed by the claims in Core Wireless of "drill[ing] down through many layers to get to desired data or functionality."[32]
Takeaways
Notwithstanding the apparent similarities between the Broadband iTV patents and those at issue in Core Wireless and Data Engine, the Federal Circuit chose instead to rely on its prior cases finding claims to be patent ineligible that were broadly directed to receiving and displaying information, organizing information based on classification information, and targeted advertising.
It remains to be seen whether the Federal Circuit's decision in Broadband iTV represents the beginning of a shift away from the previous trend of finding claims to be patent eligible directed to improved user interface technology.
Indeed, in recent years, district courts have repeatedly relied on the Federal Circuit's user interface cases to find similar user interface claims patent eligible.[33]
However, if the district courts interpret the Broadband iTV decision as a signal by the Federal Circuit of a stricter approach regarding the eligibility of claims directed to user interface technology, that may undermine one of the few areas of perceived predictability in the patent eligibility landscape in recent years.
Charles Wizenfeld and Michael DeVincenzo are partners, and Andrea Pacelli is of counsel, at King & Wood Mallesons.
This article is for general information purposes and is not intended to be and should not be taken as legal advice. A version of this article was originally published in IP Law360 on October 25, 2024.
573 U.S. 208 (2014).
113 F.4th 1359 (Fed. Cir. 2024).
Broadband iTV, 113 F.4th at 1365.
Id. at 1363.
Id. at 1364.
Id. at 1365.
Id.
See 573 U.S. at 217–18.
Broadband iTV, 113 F.4th at 1367–68.
Id. at 1368.
Id.
Id. at 1371.
Id.
Id.
Id. at 1369–73.
880 F.3d 1356 (Fed. Cir. 2018).
906 F.3d 999 (Fed. Cir. 2018).
880 F.3d at 1359.
Id.
Id. at 1363.
906 F.3d at 1003.
Id. at 1010–11.
Broadband iTV, 113 F.4th at 1368.
Id. at 1372.
Id. at 1368.
Id. at 1369.
Id.
Id. at 1372.
Id.
See Reply Br. for Appellant Broadband iTV at 10–11, Broadband iTV, Inc. v. Amazon.com, Inc. et al., No. 23-1107 (Fed. Cir. Sept. 8, 2023).
Id. at 21.
880 F.3d at 1363; compare id. at 1359 (navigating a large number of program features on "devices with small screens") with '825 patent at 19:16-21 (navigating large number of available titles using TV remote controls).
[1] See, e.g., Veeva Sys. Inc. v. Tact.ai Techs., Inc., No. CV 23-1032, 2024 WL 2848335, at *7 (D. Del. June 5, 2024) ("[W]hile the patent claims certainly advance a business purpose, they also improve computer functionality in a manner analogous to Core Wireless."); Entangled Media, LLC v. Dropbox Inc., No. 23-CV-03264-PCP, 2024 WL 575277, at *7 (N.D. Cal. Feb. 13, 2024) ("[I]n Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., the Federal Circuit found that claims 'directed to a particular manner of summarizing and presenting information in electronic devices' were directed to 'an improved user interface for computing devices, not to the abstract idea of an index.' … Like the patents in these Federal Circuit cases, Entangled Media's asserted patents 'are directed to improvements to the functionality of a computer or network platform itself,' not to mere abstract concepts implemented using computer technology."); Apple Inc. v. Masimo Corp. et al., No. CV 22-1377 (JLH), 2024 WL 4452466, at *3 (D. Del. Oct. 9, 2024) ("I see no principled basis to distinguish claim 9 from the claims determined to be patent eligible in Core Wireless … I agree with Apple that claim 9 is likewise directed to an improved user interface in computing devices with a particular manner of presenting information to the user.")).
