Activision Publishing, Inc. v. xTV Networks LTD., et al.
Central District of California
Order dated July 25, 2016
On Monday, another patent fell to the great patent slayer - 35 USC 101. Activision was but the latest patentee to see their claimed invention deemed nothing more than an abstract idea. However, this case may have been ripe for a ruling under 101 as the claims appear directed to "Informative Things" and "Thing IDs" that can be used to retrieve information associated with the informative things.
US Patent 6,549,933 was asserted by Activision in an action filed in February 2016 against xTV's xTV Now, Digital Signage, and Compute Stick products. Potentially relevant to placing these claims in context is that this patent was originally assigned to IBM before being transferred to Activision.
Claim 28 was among those asserted and recites (all language in original):
28. A method of information management in a network-based system, comprising the steps of:
(a) reading an ID (referred to as a Thing ID) from an independently portable physical object that is a data storage device (referred to as an Informative Thing), wherein:
(i) the Thing ID represents an identity of the Informative Thing; and
(ii) the Thing ID is associated with information stored at an information store separate from the Informative Thing;
(b) determining a location for where the information is stored based on the Thing ID; and
(c) retrieving the information associated with the Informative Thing from the network-based system using the Thing ID.
Defendant xTV argued that these claims were directed to the abstract concept of "information management," and more specifically to "organizing data to be able to locate information at a second location." Order at 3. Activision argued that the claims include features unique to computing which improve the functioning of the computer, and that "Informative Thing" and "Thing ID" had specific definitions in the specification. Id.
After reviewing the specification, the Court concluded that the claims were directed to the abstract idea of "using information stored in one place to determine the location of and retrieve information stored in a second place, i.e. a form of 'information management.'" Order at 8. The Court found this abstract idea similar to other ideas deemed abstract in other cases, and analogized the claims to an information desk or the Dewey Decimal system in a library. Id.
Completing the Alice analysis, the Court found that the claims did not contain sufficient "additional features" that moved the claims beyond a drafting effort designed to monopolize the abstract idea. Order at 11. Central to this analysis was a discussion of how the specification defined and used "informative thing" and "thing ID", which Activision argued to be specialized physical elements. The Court noted that these could be, e.g., floppy diskettes but also noted they could be just about anything else. Order at 12-13. The Court found that the claims were directed to general computing hardware and concluded that the claims were unpatentable under 35 USC 101.
The reader may make their own judgment as to whether these claims appear abstract on their face. One potential take away for practitioners here may be to endeavor to include important limitations in the language of the claims themselves rather than expect a Court to import those limitations from the specification. Additionally, it may be useful to include an express discussion in the specification of how the claimed techniques may improve the functionality of a computer with an eye towards eventual 101 arguments.