August 12, 2021
The Step that Can Be Performed in The Human Mind is a Telltale Sign of Abstraction
In Personalweb Technologies LLC v. Google LLC, [2020-1543, 2020-1553, 2020-1554] (August 12, 2021), the Federal Circuit affirmed the district court’s judgment on the pleadings that various claims of U.S. Patent Nos. 7,802,310, 6,415,280, and 7,949,662 were ineligible for patenting, and therefore invalid, under 35 U.S.C. § 101. The patents relate to data-processing systems that assign each data item a substantially unique name that depends on the item’s content, also known as a content-based identifier.
The Federal Circuit began its review at Step 1 of the Alice inquiry, deciding whether the claim is directed to a patent-ineligible concept. The Court evaluated the focus of the claimed advance over the prior art to determine if the claim’s “character as a whole” is directed to abstract patent claims or excluded subject matter.
The Federal Circuit agreed with the district court that the patents are directed to a three-step process:
- Using a content-based identifier generated from a hash or message digest function,
- Comparing that content-based identifier against another content-based identifier or a request for data; and
- Providing access to, denying access to, or deleting data.
The Federal Circuit concluded that the claims are directed to the use of an algorithm-generated content based identifier to perform the claimed data-management functions, including controlling access to data items (the ’310 patent), retrieving and delivering copies of data items (the ’280 patent), and marking copies of data items for deletion (the ’662 patent).
The Federal Circuit said that these functions are mental processes that “can be performed in the human mind” or “using a pencil and paper” — a telltale sign of abstraction. The fact that the process are performed in a computer environment didn’t transfigure the idea out of the realm of abstraction.
The Federal Circuit recognized that the step-one inquiry looks to the claims character as a whole rather than evaluating each claim limitation in a vacuum, but said the claims are clearly focused on the combination of those abstract-idea processes, and stringing together the claimed steps by adding one abstract idea to another amounts merely to an abstract idea.
The Federal Circuit concluded that “[t]he claims as a whole, then, are directed to a medley of mental processes that, taken together, amount only to a multistep mental process.” Ultimately, the focus of the claims is not on an improvement in computers as tools, “but on certain independently abstract ideas that use computers as tools.”
In other words, the claims focus on mere automation of manual processes using generic computers.
At Step Two, the Federal Circuit undertook a search for an inventive concept, i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Personalweb argued that the claims contain an inventive concept because they “recite an application that makes inventive use of cryptographic hashes — a use that was neither conventional nor routine prior to the patents.” However, the Federal Circuit said this was not something “more,” let alone anything “significantly more,” than the abstract idea itself.
Ultimately, the Federal Circuit said, “The district court had it right: there is ‘nothing “inventive” about any claim details, individually or in combination, that are not themselves abstract ideas.’”