1. O’Reilly v. Morse (U.S. Reissue Patent No. RE 117)

Claim 6.

The claim was interpreted by the Supreme Court as a system of signs (signals) by closing a galvanic circuit rapidly for telegraphing, combined with machinery to record the signs.

Claim 8.

I do not propose to limit myself to the specific machinery, or parts of machinery, . . . the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, signs, or letters, at any distances, being a new application of that power. . .

The claims are to the process of using electromagnetism to produce distinguishable signs for telegraphy, and in particular to print intelligible characters at any distance. While the format of the claims is outdated, it can be seen that claim 6 recites the system of signs in combination with the machinery for recording, which was found eligible. In contrast, claim 8 recites the use of electromagnetism without limits on the machinery for recording, which was found ineligible. The discovery of electromagnetism, which is a natural phenomenon, is not patentable by itself.

2. Tilghman v. Proctor (U.S. Patent No. 11,766)

The claim was interpreted by the Supreme Court as the process of subjecting to a high degree of heat a mixture continually kept up, of nearly equal quantities of fat and water in a convenient vessel strong enough to resist the effort of the mixture to convert itself into steam.

The claim is founded upon the chemical principle or scientific fact that the elements of neutral fat require that they be severally united with an atomic equivalent of water in order to separate from each other and become free. Although the claim recites the chemical union between the fatty elements and water, it is not directed to the mere principle. The claim is directed instead to a particular mode of bringing about the desired chemical union, i.e., by heating the water under such pressure that the water does not become steam, and accordingly was found eligible.

3. Mackay Radio & Telegraph Co. v. Radio Corp. of America (U.S. Patent No. 1,974,387)

Claim 15.

An antenna comprising a pair of relatively long conductors disposed with respect to each other at an angle substantially equal to twice 50.9(l/l)¥0.513 degrees, l being the length of the wire and l the operating wave length in like units, and means in circuit with said antenna for exciting the conductors in phase opposition whereby standing waves of opposite instantaneous polarity are formed on the conductors throughout their length.

The claim is to an antenna system utilizing standing wave phenomena. To obtain the best directional radio propagation by a V type antenna, a mathematical formula is used to arrange the angle of the wires, their length, and the length of the wave propagated. The claim practically applies the mathematical formula to configure a particular antenna and thus was found eligible.

4. Gottschalk v. Benson

Claim 8.

The method of converting signals from binary coded decimal form into binary which comprises the steps of:

(1) storing the binary coded decimal signals in a reentrant shift register,
(2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position of said register,
(3) masking out said binary ‘1’ in said second position of said register,
(4) adding a binary ‘1’ to the first position of said register,
(5) shifting the signals to the left by two positions,
(6) adding a ‘1’ to said first position, and
(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position of said register.

The claim recites a process for converting binary-coded-decimal (BCD) numerals into pure binary numerals. The procedures set forth in the claim are a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another. The mathematical procedures can be carried out in existing computers long in use or can be performed without a computer. The end use is unlimited. The process claim was found to be so abstract and sweeping that it covered both known and unknown uses of the BCD to pure binary conversion. The mathematical formula in the claim has no substantial practical application except in connection with a digital computer, and thus the court found the claim ineligible as it would in effect be a patent on the algorithm itself.

5. Bilski v. Kappos

Claim 1.

A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;
(b) identifying market participants for said commodity having a counter-risk position to said consumers; and
(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

The claim explains the basic concept of hedging, or protecting against risk. The court found that the concept of hedging is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. A dependent claim that narrows the concept to a mathematical formula was similarly found to be an abstract idea. The other dependent claims are broad examples of how hedging can be used in commodities and energy markets. Limiting an abstract idea to one field of use or adding token post solution components does not make the concept patentable. The claims were found ineligible.

1. SiRF Technology v. ITC 46 (U.S. Patent No. 6,417,801)

Claim 1.

A method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals comprising: providing pseudo ranges that estimate the range of the GPS receiver to a plurality of GPS satellites; providing an estimate of an absolute time of reception of a plurality of satellite signals; providing an estimate of a position of the GPS receiver; providing satellite ephemeris data; computing absolute position and absolute time using said pseudo ranges by updating said estimate of an absolute time and the estimate of position of the GPS receiver.

GPS is a satellite navigation system comprising satellites orbiting the Earth that permits a GPS-enabled receiver to detect signals from at least four satellites and use that information to calculate its distance from each satellite and thus its precise position on Earth through trilateration. The claim sets forth the steps of calculating the absolute position, which is a mathematical concept. The court interpreted the claim such that the method could not be performed without a GPS receiver, noting that the preamble expressly states ‘‘calculating an absolute position of a GPS receiver’’ and that a GPS receiver is required to generate pseudo ranges and to determine its position. With this interpretation, the presence of the GPS receiver in the claim places a meaningful limit on the scope of the claim. It is essential to the operation of the claimed method and plays a significant part in permitting the claimed method to be performed. As such, although performance of the claim requires calculations, the claim was found eligible.

2. Research Corp. Tech. v. Microsoft Corp.47 (U.S. Patent No. 5,111,310)

Claim 1.

A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

The claim is to digital image halftoning. Halftoning techniques allow computers to present many shades and color tones with a limited number of pixels, which allows computer displays and printers to render an approximation of an image by using fewer colors or shades of gray than the original image. One method of generating a digital halftoned image is called ‘‘thresholding’’ that uses a two dimensional array called a ‘‘mask.’’ The claimed method incorporates algorithms and formulas that control the masks and halftoning, but apply them in a technique that improves the generated digital halftoned image. The invention presents functional and palpable applications in the field of computer technology with specific applications or improvements to technologies in the marketplace. So, although the claimed method uses algorithms and formulas, the claim was found eligible.

3. Dealertrack Inc. v. Huber (U.S. Patent No. 7,181,427)

Claim 1.

A computer aided method of managing a credit application, the method comprising the steps of:

[A] receiving credit application data from a remote application entry and display device;
[B] selectively forwarding the credit application data to remote funding source terminal devices;
[C] forwarding funding decision data from at least one of the remote funding source terminal devices to the remote application entry and display device;
[D] wherein the selectively forwarding the credit application data step further comprises:

[D1] sending at least a portion of a credit application to more than one of said remote funding sources substantially at the same time;
[D2] sending at least a portion of a credit application to more than one of said remote funding sources sequentially until a finding source returns a positive funding decision;
[D3] sending at least a portion of a credit application to a first one of said remote funding sources, and then, after a predetermined time, sending to at least one other remote funding source, until one of the finding sources returns a positive funding decision or until all funding sources have been exhausted; or,
[D4] sending the credit application from a first remote funding source to a second remote finding source if the first funding source declines to approve the credit application.

The court reduced the claim to its most basic concept which was characterized as receiving data from one source (step A), selectively forwarding the data (step B, performed according to step D), and forwarding reply data to the first source (step C). This basic concept of processing information through a clearinghouse was found to be an abstract idea, similar to Bilski’s basic concept of hedging. The court held that simply adding a ‘‘computer-aided’’ limitation to a claim covering an abstract concept, without more, does not sufficiently limit the claim. The claim was found ineligible.

4. SmartGene, Inc. v. Advanced Biological Laboratories, SA (U.S. Patent No. 6,081,786)

Claim 1.

A method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition, said method comprising:

(a) providing patient information to a computing device comprising: a first knowledge base comprising a plurality of different therapeutic treatment regimens for said disease or medical condition;
a second knowledge base comprising a plurality of expert rules for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition; a third knowledge base comprising advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens; and
(b) generating in said computing device a ranked listing of available therapeutic treatment regimens for said patient; and
(c) generating in said computing device advisory information for one or more therapeutic treatment regimens in said ranked listing based on said patient information and said expert rules.

The claims set forth the steps of comparing new and stored information and using rules to identify medical options. Claim 1 does no more than call on a ‘‘computing device’’ with basic functionality for comparing stored and input data and rules, to do what doctors do routinely. The court concluded that these are familiar mental steps performed by or with a computer, and as such the claim was found ineligible.

5. Cyberfone Systems v. CNN Interactive Group (U.S. Patent No. 8,019,060)

Claim 1.

A method, comprising: obtaining data transaction information entered on a telephone from a single transmission from said telephone; forming a plurality of different exploded data transactions for the single transmission, said plurality of different exploded data transaction indicative of a single data transaction, each of said exploded data transactions having different data that is intended for a different destination that is included as part of the exploded data transactions, and each of said exploded data transactions formed based on said data transaction information from said single transmission, so that different data from the single data transmission is separated and sent to different destinations; and sending said different exploded data transactions over a channel to said different destinations, all based on said data transaction information entered in said single transmission.

Using categories to organize, store, and transmit information is well- established. Here, the well-known concept of categorical data storage, i.e., the idea of collecting information in classified form, then separating and transmitting that information according to its classification, is an abstract idea. The claim was found ineligible.

1. Digitech Image Tech., LLC v. Electronics for Imaging, Inc. (U.S. Patent No. 6,128,415)

Claim 10.

A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising: generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions; generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and device response characteristic functions; and combining said first and second data into the device profile.

The court found the claim to be an abstract idea because it describes a process of organizing information through mathematical correlations and is not tied to a specific structure or machine. The claim recites the process of taking two data sets and combining them into a single data set, the device profile. The two data sets are generated by taking existing information—i.e., measured chromatic stimuli, spatial stimuli, and device response characteristic functions—and organizing this information into a new form. The claim language does not expressly tie the method to an image processor. It generically recites a process of combining two data sets into the device profile; it does not claim the processor’s use of that profile in the capturing, transforming, or rendering of a digital image. Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible. All of the claims were found ineligible.

2. Planet Bingo, LLC v. VKGS LLC (U.S. Patent No. 6,398,646)

Claim 1.

A system for managing a game of Bingo which comprises:

(a) a computer with a central processing unit (CPU) and with a memory and with a printer connected to the CPU;
(b) an input and output terminal connected to the CPU and memory of the computer; and
(c) a program in the computer enabling:

(i) input of at least two sets of Bingo numbers which are preselected by a player to be played in at least one selected game of Bingo in a future period of time;
(ii) storage of the sets of Bingo numbers which are preselected by the player as a group in the memory of the computer;
(iii) assignment by the computer of a player identifier unique to the player for the group having the sets of Bingo numbers which are preselected by the player wherein the player identifier is assigned to the group for multiple sessions of Bingo;
(iv) retrieval of the group using the player identifier;
(v) selection from the group by the player of at least one of the sets of Bingo numbers preselected by the player and stored in the memory of the computer as the group for play in a selected game of Bingo in a specific session of Bingo wherein a number of sets of Bingo numbers selected for play in the selected game of Bingo is less than a total number of sets of Bingo numbers in the group;
(vi) addition by the computer of a control number for each set of Bingo numbers selected for play in the selected game of Bingo;
(vii) output of a receipt with the control number, the set of Bingo numbers which is preselected and selected by the player, a price for the set of Bingo numbers which is preselected, a date of the game of Bingo and optionally a computer identification number; and
(viii) output for verification of a winning set of Bingo numbers by means of the control number which is input into the computer by a manager of the game of Bingo.

The court found the claims to be directed to the abstract idea of solving a tampering problem and also minimizing other security risks during bingo ticket purchases. The claims relate to managing a bingo game while allowing a player to repeatedly play the same sets of numbers in multiple sessions. Managing the game of bingo consists solely of mental steps which can be carried out by a human using pen and paper. The claims do not impose any requirements that would make the invention impossible to carry out manually. Although not drawn to the same subject matter at issue in Bilski and Alice Corp., the court found managing a game of bingo to be similar to the kind of organizing human activity at issue in Alice Corp. The claims recite a generic computer implementation of the abstract idea and a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers. There is no inventive concept sufficient to transform the claimed subject matter into a patenteligible application. The court found no meaningful distinction between the method and system claims. All of the claims were found ineligible.

3. buySAFE, Inc. v. Google, Inc. (U.S. Patent No. 7,644,019)

Claim 1.

A method, comprising: receiving, by at least one computer application program running on a computer of a safe transaction service provider, a request from a first party for obtaining a transaction performance guaranty service with respect to an online commercial transaction following closing of the online commercial transaction; processing, by at least one computer application program running on the safe transaction service provider computer, the request by underwriting the first party in order to provide the transaction performance guaranty service to the first party, wherein the computer of the safe transaction service provider offers, via a computer network, the transaction performance guaranty service that binds a transaction performance guaranty to the online commercial transaction involving the first party to guarantee the performance of the first party following closing of the online commercial transaction.

Claim 14.

The method according to claim 1, wherein the transaction performance guaranty is provided in one form of: a surety bond; a specialized bank guaranty; a specialized insurance policy; and a safe transaction guaranty provided by the safe transaction service provider.

Relying on Bilski in which an abstract idea was found in certain arrangements involving contractual relations, the court found the claims to be squarely about creating a contractual relationship—a ‘‘transaction performance guaranty’’—that is beyond question of ancient lineage. The claims’ invocation of computers adds no inventive concept, with the computer functionality being generic. The transactions being performed online, at best, limits the use of the abstract guaranty idea to a particular technological environment. Although, dependent claim 14 narrows the abstract idea to particular types of relationships, that does not change the analysis because it does not make the idea nonabstract. The claims to the computer readable medium encoded with instructions to carry out the method were treated in the same way. All of the claims were found ineligible.

4. Ultramercial, LLC v. Hulu, LLC and WildTangent (U.S. Patent No. 7,346,545)

Claim 1:

A method for distribution of products over the Internet via a facilitator, said method comprising the steps of: a first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data; a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message; a third step of providing the media product for sale at an Internet Web site; a fourth step of restricting general public access to said media product; a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message; a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product; a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer; an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message; a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query; a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

Using the Alice Corp. framework, the court first determined whether the claims at issue are directed to a patent ineligible concept. The court found that the ordered combination of the eleven steps recites ‘‘an abstraction—an idea, having no particular concrete or tangible form’’ noting that the majority of limitations describe only the abstract idea of showing an advertisement before delivering content. The court then turned to the next step of the analysis to determine whether the claims do significantly more than simply describe the abstract method. The court explained that consulting and updating an activity log represent insignificant ‘‘data-gathering steps,’’ restricting public access represents only insignificant ‘‘[pre]-solution activity,’’ and narrowing the idea to the Internet is an attempt to limit the use of the abstract idea ‘‘to a particular technological environment.’’ Viewed both individually and as an ordered combination, the claimed steps were found insufficient to supply an inventive concept because the steps are conventional and specified at a high level of generality. The court concluded that the claim limitations do not transform the abstract idea that they recite into patent-eligible subject matter because ‘‘the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity.’’ All of the claims were found ineligible.

5. DDR Holdings, LLC v. Hotels.com, L.P. (U.S. Patent No. 7,818,399)

Claim 19:

A system useful in an outsource provider serving Web pages offering commercial opportunities, the system comprising:

(a) a computer store containing data, for each of a plurality of first Web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first Web pages;

(i) wherein each of the first Web pages belongs to one of a plurality of Web page owners;
(ii) wherein each of the first Web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and
(iii) wherein the selected merchant, the outsource provider, and the owner of the first Web page displaying the associated link are each third parties with respect to one other;

(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:

(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first Web pages;
(ii) automatically identify as the source page the one of the first Web pages on which the link has been activated;
(iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and
(iv) using the data retrieved, automatically generate and transmit to the web browser a second Web page that displays: (A) Information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page.

The court found the claim patent eligible under the Alice Corp. framework. First, the court noted that, while in some instances abstract ideas are plainly identifiable and divisible from generic computer limitations recited by the remainder of a claim, in this case, identifying the precise nature of the abstract idea is not as straightforward. The court considered several proposed characterizations of the abstract idea, including ‘‘‘making two Web pages look the same,’ ‘syndicated commerce on the computer using the Internet’ and ‘making two ecommerce Web pages look alike by using licensed trademarks, logos, color schemes and layouts,’’’ and ‘‘that an online merchant’s sales can be increased if two Web pages have the same ‘look and feel.’’’ The court did not clearly indicate whether the claim was directed to one or more of these proposed abstract ideas, but stated that ‘‘under any of these characterizations of the abstract idea, the ‘399 patent’s claims satisfy Mayo/Alice step two.’’

The court then explained its analysis of the second Mayo/Alice step, where it determined that the claim amounted to an inventive concept and thus was patent eligible. In particular, the claim addresses the problem of retaining Web site visitors from being diverted from a host’s Web site to an advertiser’s Web site, for which ‘‘the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.’’ The claim includes additional elements including ‘‘1) stor[ing] ‘visually perceptible elements’ corresponding to numerous host Web sites in a database, with each of the host Web sites displaying at least one link associated with a product or service of a third-party merchant, 2) on activation of this link by a Web site visitor, automatically identif[ying] the host, and 3) instruct[ing] an Internet web server of an ‘outsource provider’ to construct and serve to the visitor a new, hybrid Web page that merges content associated with the products of the third-party merchant with the stored ‘visually perceptible elements’ from the identified host Web site.’’ The court held that, unlike in Ultramercial, the claim does not generically recite ‘‘use the Internet’’ to perform a business practice, but instead recites a specific way to automate the creation of a composite Web page by an outsource provider that incorporates elements from multiple sources in order to solve a problem faced by Web sites on the Internet. Therefore, the court held that the claim is patent eligible.