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Intellectual Ventures I v. Erie Indemnity

Representative Claim

  1. A computer-implemented method for identifying and characterizing stored electronic files, said method comprising:

under control of one or more configured computer systems: ?
selecting a file from a plurality of files stored in a computer storage medium, wherein selecting the file is performed according to at least one of:
selecting the file based on the size of the file by determining whether an aggregate size of plural identically-sized files exceeds a predetermined threshold;
selecting the file based on whether content of the file matches a file type indicated by a name of the file; or
selecting the file based on whether the file comprises data beyond an end of data marker for the file;
generating an identification value associated with the selected file, wherein the identification value is representative of at least a portion of the content of the selected file;
comparing the generated identification value to one or more identification values associated with one or more of a plurality of unauthorized files; and
characterizing the file as an unauthorized file if the identification value matches one of the plurality of identification values associated with the unauthorized files.


Appeal from the United States District Court for the Western District of Pennsylvania in No. 1:14-cv-00220-MRH, Judge Mark R. Hornak.

Abstract Idea: Yes

The Federal Circuit affirmed the district court’s Step One determination that “the claims [were] directed to the identification of unwanted files in a particular field (i.e., a computer network) and otherwise concern[ed] data collection related to such identification, such that they [were] directed to an abstract idea under [the circuit court’s] precedent.”  The Federal Circuit explained that the specification lent support to its conclusion that the claims were directed to an abstract idea because the specification repeatedly noted “that selection of errant files generally could be performed by humans.”

The patent owner attempted to analogize the claims of the ’298 Patent to those involved in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), where the Federal Circuit found claims of software patents were not directed to abstract ideas.  The Federal Circuit disagreed, finding that the claims of the ’298 Patent merely implemented “an old practice in a new environment.”  More specifically, the circuit court reasoned that the patent owner could not show that the claimed processes of selecting errant files applied “rules of selection in a manner different from those which humans used . . . before the invention was claimed.”

The Federal Circuit went on to explain that the ’298 Patent’s claims were “not directed to an improvement in the way computers operate.”  Here, the circuit court noted that although the claims purported to accelerate the process of finding errant files and to reduce error, the court has “held that speed and accuracy increases stemming from the ordinary capabilities of a general-purpose computer ‘do not materially alter the patent eligibility of the claimed subject matter.’”

Something More: No

The Federal Circuit affirmed the district court’s Step Two finding that the asserted claims did not contain “an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.”  The Federal Circuit explained that the ’298 Patent taught a method that was “repeatedly and explicitly” referred to as “computer-implemented.”  Additionally, it taught a “computer system” comprised of “a server” and a “file identification application,” but never suggested that any of these computer components were non-generic.

The patent owner argued that the prosecution history of the ’298 Patent showed that the three selection steps were not conventional because they were “added . . . during prosecution to obtain allowance of the claims.”  The Federal Circuit disagreed, stating that “[w]hile the claims may not have been anticipated or obvious because the prior art did not disclose [the selection criteria], that does not suggest that the idea of [‘selecting’ errant files] is not abstract.”

Moreover, the Federal Circuit found that the USPTO’s allowance of the claims under the machine-or-transformation test did not suggest that the ’298 Patent’s claims were patent-eligible subject matter.  To start, the circuit court noted that the machine-or-transformation test “is not the sole test governing § 101 analyses” but “can provide a useful clue in the second step of the Alice framework.”  The Federal Circuit went on to conduct a substantive analysis under the machine-or-transformation test, noting “a claimed process can be patent-eligible under § 101 if it is tied to a particular machine or apparatus.”  By contrast, the circuit court found that the claims of the ’298 Patent merely “disclosed