March 6, 2020
Software Can Make Non-Abstract Improvements to Computer Technology Just as Hardware Can (But Didn’t Here)
In Customedia Technologies, LLC v. Dish Network Corporation, [2018-2239, 2019-1000] (March 6, 2020), the Federal Circuit affirmed the PTAB’s determination that U.S. Patent Nos. 8,719,090 and 9,053,494 on comprehensive data management and processing systems were ineligible under 35 U.S.C. §101.
The Federal Circuit followed the Supreme Court’s two-step framework for determining patent-eligibility under §101. At Step 1, the Federal Circuit found that the claims at issue here were directed to the abstract idea of using a computer to deliver targeted advertising to a user, not to an improvement in the functioning of a computer. The Federal Circuit explained that to be a patent-eligible improvement to computer functionality, it requires the claims to be directed to an improvement in the functionality of the computer or network platform itself. Improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality.
At step two, the Federal Circuit agreed with the Board that the elements of the claims, considered individually and as an ordered combination, fail to recite an inventive concept. The Federal Circuit noted that, aside from the abstract idea of delivering targeted advertising, the claims recite only generic computer components, including a programmable receiver unit, a storage device, a remote server and a processor.
Such generic and functional hardware is insufficient to render eligible claims directed to an abstract idea. The invocation of already-available computers that are not themselves plausibly asserted to be an advance amounts to a recitation of what is well-understood, routine, and conventional.
In sum, software can make non-abstract improvements to computer technology just as hardware improvements can. To be directed to a patent-eligible improvement to computer functionality, however, the claims must be directed to an improvement to the functionality of the computer or network platform itself.