from the United States District Court for the District of
Delaware in Nos. 1:10-cv-01067-LPS, 1:12-cv-01581-LPS, Chief
Judge Leonard P. Stark.
F. Citron, Goldstein & Russell, P.C., Bethesda, MD,
argued for plaintiff-appellant. Also represented by Thomas
Goldstein; Brooke Ashley May Taylor, Parker C. Folse III,
Susman Godfrey L.L.P., Seattle, WA; Richard W. Hess, John
Pierre Lahad, Houston, TX.
Douglas Ethan Lumish, Latham & Watkins LLP, Menlo Park,
CA, argued for defendant-cross appellant. Also represented by
Jeffrey G. Homrig; Dean G. Dunlavey, Costa Mesa, CA; Gabriel
Bell, Robert J. Gajarsa, Washington, DC.
Roman Chaikovsky, Paul Hastings LLP, Palo Alto, CA, argued
for defendants-appellees. Also represented by Daryl Stuart
Bartow, Bryan Keith James; Blair Martin Jacobs, Washington,
Kesan, University of Illinois, College of Law, Champaign, IL,
for amici curiae Jay P. Kesan, Shubha Ghosh, Richard Gruner,
Carol M. Hayes, Adam Mossoff, Kristen Osenga, Michael Risch,
Mark F. Schultz, Ted Sichelman.
Dyk, Mayer, and Stoll, Circuit Judges.
Ventures I LLC ("IV") sued Symantec Corp. and Trend
Micro (together, "appellees" or
"defendants") for infringement of various claims of
U.S. Patent Nos. 6, 460, 050 ("the '050
patent"), 6, 073, 142 ("the '142 patent"),
and 5, 987, 610 ("the '610 patent"). The
district court held the asserted claims of the '050
patent and the '142 patent to be ineligible under §
101, and the asserted claim of the '610 patent to be
eligible. We affirm as to the asserted claims of the '050
patent and '142 patent, and reverse as to the asserted
claim of the '610 patent.
the three patents at issue: the '050 patent, the '142
patent, and the '610 patent. IV sued Symantec and Trend
Micro, two developers of anti-malware and anti-spam software,
for infringement of various claims of those patents. Against
Symantec, IV asserted claims 9, 16, and 22 of the '050
patent; claims 1, 7, 21, and 22 of the '142 patent; and
claim 7 of the '610 patent. Against Trend Micro, IV
asserted claims 9, 13, 16, 22, and 24 of the '050 patent;
and claims 1, 7, 17, 21, 22, 24, and 26 of the '142
respect to the two defendants, a § 101 patent
eligibility issue arose at different stages of the
proceedings. The case against Symantec went to trial. The
jury found that Symantec had not proven by clear and
convincing evidence that any asserted claims were invalid
under §§ 102 and 103. The jury found Symantec had
infringed the asserted claims of the '142 patent and
'610 patent, and had not infringed any asserted claims of
the '050 patent. After trial, Symantec brought a motion
under Fed.R.Civ.P. 52(c) for a judgment that all the asserted
claims of the three patents-in-suit are unpatentable under 35
U.S.C. § 101, an issue not addressed in the jury
case against Trend Micro did not go to trial. Trend Micro
brought a motion for summary judgment of invalidity under
§ 101 for all of the asserted claims. After Trend
Motion had submitted its motion, IV withdrew its assertion of
claim 7 of the '610 patent against Trend Micro, the only
claim of the '610 patent asserted against Trend Micro.
Thus the motions raised issues of patent eligibility as to
the '050 and '142 patents with respect to both
defendants, and as to the '610 patent only with respect
'050 patent is entitled, "Distributed Content
Identification System." The patent application was filed
on December 22, 1999, and the '050 patent issued on
October 1, 2002. The patent is directed to methods of
screening emails and other data files for unwanted content.
'142 patent is entitled, "Automated Post Office
Based Rule Analysis of E-Mail Messages and Other Data Objects
for Controlled Distribution in Network Environments."
The patent application was filed on June 23, 1997, and the
'142 patent issued on June 6, 2000. The patent is
directed to methods of routing e-mail messages based on
specified criteria (i.e., rules).
'610 patent is entitled, "Computer Virus Screening
Methods and Systems." The patent application was filed
on February 12, 1998, and the patent issued on November 16,
1999. The patent is directed to using computer virus
screening in the telephone network.
cases the district court determined that the asserted claims
of the '050 patent and '142 patent claimed ineligible
subject matter under 35 U.S.C. § 101, and granted
appellees' motions with respect to those patents. The
district court held, however, that Symantec had failed to
establish that the asserted claim of the '610 patent is
patent-ineligible under § 101, and denied Symantec's
motion with respect to that patent.
judgment was entered in favor of Symantec and Trend Micro
that the asserted claims of the '050 and '142 patents
are patent-ineligible under 35 U.S.C. § 101. Id.
See Final Judgment Following Jury Trial ("Symantec
Final Judgment"), Intellectual Ventures I LLC v.
Symantec Corp., No. 10-cv-1067-LPS (D. Del. March 24,
2016), ECF No. 770 at 2; Judgment, Intellectual Ventures I
LLC v. Trend Micro Inc., No. 12-cv-1581-LPS (D. Del.
June 17, 2015), ECF No. 234 at 2. This resolved all claims
against Trend Micro. With respect to Symantec, the district
court entered final judgment in favor of IV that Symantec
infringed claim 7 of the '610 patent with damages in the
amount of $8 million, and that claim 7 was also not proved
invalid by Symantec under 35 U.S.C. §§ 102 or 103,
or patent-ineligible under § 101. See Symantec
Final Judgment at 2.
appeals the district court's ineligibility determinations
with respect to the '050 patent and '142 patent as to
Symantec and Trend Micro, and Symantec cross-appeals the
determination of eligibility for the '610 patent. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
review the grant or denial of summary judgment de
novo. See Nicini v. Morra, 212 F.3d 798, 805
(3d Cir. 2000) (en banc). For the district court's entry
of judgment under Rule 52(c), we review the district
court's factual findings for clear error and its legal
conclusions de novo. See EBC, Inc. v. Clark
Bldg. Sys., Inc., 618 F.3d 253, 273 (3d Cir. 2010).
Patent eligibility under § 101 is an issue of law which
we review de novo. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015).
101 of title 35 defines patent-eligible subject matter. It
provides, "[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain
a patent therefor . . . ." 35 U.S.C. § 101. For
over 150 years, the Supreme Court has recognized an implicit
exception to these broad categories encompassing "[l]aws
of nature, natural phenomena, and abstract ideas[, which] are
not patentable." Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S.Ct. 1289, 1293 (2012)
(citation and internal quotation marks omitted); see also
Bilski v. Kappos, 561 U.S. 593, 601-02 (2010).
Mayo and in Alice, the Court set forth a
framework for "distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts."
Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134
S.Ct. 2347, 2355 (2014). At Mayo/Alice step one, a
court must "determine whether the claims at issue are
directed to one of those patent-ineligible concepts."
Id. The category of abstract ideas embraces
"fundamental economic practice[s] long prevalent in our
system of commerce, " id. at 2356 (quoting
Bilski, 561 U.S. at 611), including
"longstanding commercial practice[s]" and
"method[s] of organizing human activity, "
id. But the category of abstract ideas is not
limited to economic or commercial practices or methods of
organizing human activity. See infra note 5.
claim is directed to a patent-ineligible concept, the court
must proceed to Mayo/Alice step two, and ask,
"what else is there in the claims before us?"
Alice, 134 S.Ct. at 2355 (citation and internal
quotation citation omitted). Step two is "a search for
an inventive concept- i.e., an element or
combination of elements that is sufficient to ensure that the
patent in practice amounts to significantly more than a
patent upon the ineligible concept itself." Id.
(citation and internal quotation marks omitted).
Mayo/Alice step two, the search is for "an
inventive concept sufficient to transform the claimed
abstract idea into a patent-eligible application."
Id. at 2357 (citation and internal quotation marks
omitted). And "[s]imply appending conventional steps,
specified at a high level of generality, " which are
"well known in the art" and consist of
"well-understood, routine, conventional
activit[ies]" previously engaged in by workers in the
field, is not sufficient to supply the inventive concept.
Id. at 2357, 2359 (citations and internal quotation
district court held patent-ineligible the asserted claims of
the '050 patent-claims 9, 13, 16, 22, and 24- directed to
filtering e-mails that have unwanted content. We agree with
the district court. The parties agree that independent claim
9 is representative. It recites:
9. A method for identifying characteristics of data files,
receiving, on a processing system, file content identifiers
for data files from a plurality of file content identifier
generator agents, each agent provided on a source system and
creating file content IDs using a mathematical algorithm, via
determining, on the processing system, whether each received
content identifier matches a characteristic of other
outputting, to at least one of the source systems responsive
to a request from said source system, an indication of the
characteristic of the data file based on said step of
'050 patent, col. 8, ll. 13-26. According to IV, this
method of filtering emails is used to address the problems of
spam e-mail and the use of e-mail to deliver computer
agree with the district court that receiving e-mail (and
other data file) identifiers, characterizing e-mail based on
the identifiers, and communicating the characpterization-in
other words, filtering files/e-mail-is an abstract idea.
Supreme Court has held that "fundamental . . .
practice[s] long prevalent" are abstract ideas.
Alice, 134 S.Ct. at 2356. The Supreme Court and we
have held that a wide variety of well-known and other
activities constitute abstract ideas.
it was 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. The list of relevant characteristics could
be kept in a person's head. Characterizing e-mail based
on a known list of identifiers is no less abstract. The
patent merely applies a well-known idea using generic
computers "to the particular technological environment
of the Internet." DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014).
asserted claims of the '050 patent also resemble claims
we have held were directed to an abstract idea. Recently, in
BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, we held that a claim to a "content
filtering system for filtering content retrieved from an
Internet computer network[, e.g., to prevent users from
accessing certain websites] . . . is [directed to] an
abstract idea." 827 F.3d 1341, 1348 (Fed. Cir.
2016). And in Content Extraction, 776
F.3d at 1347, cert. denied, 136 S.Ct. 119 (2015), we
found that the asserted patents were "drawn to the
abstract idea of 1) collecting data, 2) recognizing certain
data within the collected data set, and 3) storing that
recognized data in a memory."
we hold the asserted claims of the '050 patent are
directed to an abstract idea, we proceed to
Mayo/Alice step two to determine whether the claims
contain an "inventive concept" that renders them
patent-eligible. Claims that "amount to nothing
significantly more than an instruction to apply [an] abstract
idea . . . using some unspecified, generic computer" and
in which "each step does no more than require a generic
computer to perform generic computer functions" do not
make an abstract idea patent-eligible, Alice, 134
S.Ct. at 2359-60 (citations and internal quotation marks
omitted), because "claiming the improved speed or
efficiency inherent with applying the abstract idea on a
computer" does not "provide a sufficient inventive
concept." Intellectual Ventures I LLC v. Capital One
Bank (USA) ("Intellectual Ventures v. Capital
One Bank"), 792 F.3d 1363, 1367 (Fed. Cir. 2015).
argues that the jury verdict determined that Symantec's
proffered prior art did not anticipate or render obvious the
asserted claims of the '050 patent, and that the
jury's anticipation and obviousness determination is
inconsistent with a determination that the claims are
patent-ineligible. While the claims may not have been
anticipated or obvious because the prior art did not disclose
"determining . . . whether each received content
identifier matches a characteristic" or "outputting
. . . an indication of the characteristic of the data file,
" that does not suggest that the idea ...