Is improving a user’s experience while using a computer patentable? CUSTOMEDIA v. DISH

A patent is a set of exclusive rights granted to the inventor of a new, useful and not obvious invention. In the United States an inventor gains a patent by filing a patent application with the United States Patent and Trademark Office. The patent application is reviewed by a patent examiner at the United States Patent and Trademark Office and if the patent application meets all the requirements, the inventor is granted a patent on the invention. A patent grants its owner the exclusive right to make, use, sell and import the invention in the United States.

Even after a patent is granted, it can still be invalidated. The subject matter to which the invention relates is one of the grounds on which a patent can be invalidated. Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof is eligible for patent protection. §35 U.S.C. 101 There are also some judicially created exceptions to patent eligible subject matter, namely, laws of nature, physical phenomena, and abstract ideas. Patents that have been granted in the past can be deemed invalid if court precedent changes the definition of these judicially created exceptions.

Whether computer software is eligible subject matter for patent protection is an evolving question. Computer software typically takes algorithms, which can be considered an abstract idea, and applies these algorithms to perform a task. The first United States patent on a piece of computer software was issued in April 23, 1968. Since that time the definition of eligible subject matter has changed significantly, first enlarging and then shrinking the definition of what is considered patent eligible. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) articulates the present test to determine if computer software is eligible for patent protection. The first step in the Alice test is to determine whether the claims of the patent are directed to a patent-ineligible concept, like an abstract idea. If the first step is true, then each patent claim is reviewed both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application. Understanding how the Alice test is applied can be difficult to grasp, therefore it is helpful to study case precedent.

CUSTOMEDIA TECHNOLOGIES, LLC, v. DISH NETWORK CORP, 2019-1000 (C.A.F.C. 2019) is a case where computer software was found to be directed to an abstract idea and not eligible for patent protection.

The plaintiff in this case owns U.S. Patent No. 8,719,090 and U.S. Patent No. 9,053,494 which relate to a comprehensive data management and processing systems. According to the specification, these systems comprise a remote Account Transaction Server (ATS) and a local host Data Management System and Audio/Video Processor Recorder player (VPR/DMS), e.g., a cable set-top box. Broadcasters and other content providers transmit advertising data via the ATS to a local VPR/DMS. The advertising data may then be selectively recorded in programmable storage sections in the VPR/DMS according to a user’s preferences.

The defendant in this case petitioned for review of the patents pursuant to the Transitional Program for Covered Business Method Patents (CBM review). The Patent Trial and APpeal Board instituted CBM review and found a majority of the patent claims to be ineligible for patent protection under 35 U.S.C. § 101. The plaintiff appealed the Boards decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit affirmed the Board’s decision. The Federal Circuit found that the invention claimed in the patents merely improves the abstract concept of delivering targeted advertising using a computer only as a tool. Merely improving a fundamental practice or abstract process by invoking a computer merely as a tool is not enough to make an invention eligible for patent protection. 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. To be directed to a patent-eligible improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer itself. The Federal Circuit held that aside from the abstract idea of delivering targeted advertising, the patents only claim generic computer components, there is not enough to demonstrate an inventive concept.

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