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Intellectual Ventures I LLC v. Symantec Corp.

United States Court of Appeals, Federal Circuit

September 30, 2016

SYMANTEC CORP., Defendant-Cross-Appellant TREND MICRO INCORPORATED, TREND MICRO, INC. (USA), Defendants-Appellees

         Appeals 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.

          Eric 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.

          Yar 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, DC.

          Jay P. 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.

          Before Dyk, Mayer, and Stoll, Circuit Judges.


          Dyk, Circuit Judge.

         Intellectual Ventures I LLC ("IV") sued Symantec Corp. and Trend Micro[1] (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.



         IV owns 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 patent.

         With 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.[2] 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 verdict.

         The 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.[3] 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 to Symantec.


         The '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.

         The '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).

         The '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.

         In both 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.

         Final 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;[4] 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.

         IV now 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).



         We 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., Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015).


         Section 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).

         In 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.

         If a 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).

         At 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 marks omitted).

         1. The '050 Patent

         The 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, comprising:
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 a network;
determining, on the processing system, whether each received content identifier matches a characteristic of other identifiers; and
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 determining.

'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 viruses.

         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 characpterization-in other words, filtering files/e-mail-is an abstract idea.

         The 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.[5]

         Here, 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.[6] 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., L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014).

         The 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).[7] 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."

         Because 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).

         IV 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 ...

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