IV sued Symantec Corp. and Trend Micro Inc. for infringement of various claims of the three patents by selling anti-malware and anti-spam software.
The court began by applying the first step of the two-step analysis prescribed in Alice Corp. v. CLS Bank Int'l,[5] and Mayo Collaborative Services v. Prometheus Labs., Inc.,[6] the so-called Mayo/Alice methodology, which is to determine whether the claim is based on an abstract idea.
The court stated: "We agree with the district court that receiving e-mail (and other data file) identifiers, characterizing e-mail based on the identifiers, and communicating the characterization—in other words, filtering files/e-mail—is an abstract idea" because "it was [a] long-prevalent practice for people receiving paper mail to look at an envelope and discard certain letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the mail," and "[c]haracterizing e-mail based on a known list of identifiers is no less abstract."
[7] The Federal Circuit therefore proceeded to the second step of the Alice methodology, which is to determine whether the patent adds anything inventive to implement the abstract idea.
The court held the claimed steps "routine and conventional," despite IV's argument that because the prior art did not disclose "determining .
"[10] "[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper."
The court stated: "For the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of 'well understood, routine, [and] conventional activities previously known to the industry.'
On the first point, Judge Mayer insisted: Suppression of free speech is no less pernicious because it occurs in the digital, rather than the physical, realm.
Whatever the challenges of applying the Constitution to ever-advancing technology, the basic principles of freedom of speech and the press, like the First Amendment's command, do not vary when a new and different medium for communication appears.
In the section 101 calculus, adding software (which is as abstract as language) to a conventional computer (which rightfully resides in the public domain) results in a patent eligibility score of zero.
IV's petition argues that rehearing en banc is warranted because Judge Mayer's concurring opinion "openly revolts against the more careful efforts of this Court to prevent Section 101 from swallowing all software patents."
The blog described his concurring opinion in these terms: Notably, he concluded that "[e]ssential First Amendment freedoms are abridged when the Patent and Trademark Office ("PTO") is permitted to balkanize the Internet, granting patent owners the right to exact heavy taxes on widely-used conduits for online expression."
Thus, the Judge advocated that "Section 101, if properly applied, can preserve the Internet's open architecture and weed out those patents that chill political expression and impermissibly obstruct the marketplace of ideas.The blog criticized Mayer's opinion as indulging in a robustly overgeneralized statement – 'patents constricting essential channels of online communications run afoul of the First Amendment' – and moves on to other topics."
The commentary concludes that Judge Mayer's "unnerving" First Amendment comments are "results-oriented judicial vagueness [that] is a form of dangerous reasoning – especially when it implicates, but does not acknowledge, the intricacies of navigating the case law surrounding such a fundamental constitutional right.
[21]● Dennis Crouch, in Patently-O, focused on the same aspect of the case: The big news from Intellectual Ventures v. Symantec (Fed.
2016) is not that the court found IV's content identification system patents invalid as claiming ineligible subject matter.
[22]● The JDSupra blog also found that what is most notable about the case is Judge Mayer' concurrence, where he makes two points: 1) patents constricting the essential channels of online communication run afoul of the First Amendment; and
2) claims directed to software implemented on a generic computer are categorically not eligible for patent.The blog goes on to explain the reasoning underlying Mayer's position: Mayer comments that although the claims at issue here disclose no new technology, they have the potential to disrupt, or even derail, large swaths of online communication.
He states that: "Section 101 creates a "patent-free zone" and places within it the indispensable instruments of social, economic, and scientific endeavor."
He believes that Section 101, if properly applied, can preserve the Internet's open architecture and weed out those patents that chill political expression and impermissibly obstruct the marketplace of ideas.
This is justified in Mayer's mind because computers are indispensable and are a basic tool of modern life, and are thus not subject to the patent monopoly.
[23]● Fortune weighed in to say: The end may be in sight for software patents—which have long been highly controversial in the tech industry—in the wake of a remarkable appeals court ruling that described such patents as a "deadweight loss on the nation's economy" and a threat to the First Amendment's free speech protections.
The most important part of the decision, which has created a stir among the patent bar, is a concurrence by Circuit Judge Haldane Mayer.
Techdirt concludes by asking what the next step in this case will be: "It will be interesting to see if Intellectual Ventures tries to kick this up a level to the Supreme Court, where it might risk SCOTUS actually agreeing with Judge Mayer.