2024 Federal Circuit IP Appeals – Patent Eligibility in 2024: A Sextet of Precedential Decisions

The Federal Circuit issued six precedential decisions on patent eligibility in 2024—five finding in favor of the patent challenger and one finding in favor of the patent owner. These decisions serve as a reminder of some basic principles of modern eligibility law and may provide practitioners with useful analogies for future (in)eligibility arguments.

Mobile Acuity Ltd. v. Blippar Ltd., 110 F.4th 1280 (Fed. Cir. 2024) (Lourie, Bryson, Stark): The court affirmed a pleadings-stage invalidation of patents directed to storing and presenting information associated with particular images. The claims were directed to an abstract idea at Alice step one because they “consist[ed] solely of result-oriented, functional language and omit[ted] any specific requirements as to how these steps of information manipulation are performed.” And they failed Alice step two because the inventive concept asserted by the patentee was merely a restatement of the abstract idea itself—“comparing images and displaying information based on the comparison.” In the course of its analysis, the court clarified the burdens of proof and production related to representative claims. The patent challenger bears the initial burden to show that a given claim or claims is representative, and the burden then shifts to the patentee to make a “non-frivolous argument” otherwise. The ultimate burden of proof on representativeness always remains with the patent challenger.

Broadband iTV, Inc. v. Amazon.com, Inc., 113 F.4th 1359 (Fed. Cir. 2024) (Dyk, Reyna, Stark): The court affirmed a summary judgment ruling holding claims directed to electronic program guides for television as patent ineligible. The claims failed Alice step one, the court held, because they were directed to the collection, organization, and display of information, and they failed Alice step two because they recited only generic and conventional components. Certain claims required using a user’s viewing history data to recommend categories of video content; the Federal Circuit characterized those claims as “directed to a type of ‘targeted advertising,’ which [the court has] repeatedly found abstract.”

AI Visualize, Inc. v. Nuance Commc’ns, Inc., 97 F.4th 1371 (Fed. Cir. 2024) (Moore, Reyna, Hughes): The court affirmed a pleadings-stage invalidation of patents directed to storing, processing, and viewing large medical scans over the internet. The claims failed Alice step one because they merely recited “the steps of obtaining, manipulating, and displaying data … claimed at a high level of generality.” And they failed Alice step two because they “involved nothing more than the abstract idea itself or conventional computer components.”

Miller Mendel, Inc. v. City of Anna, Tex., 107 F.4th 1345 (Fed. Cir. 2024) (Moore, Stoll, Cunningham): The court affirmed a pleadings-stage invalidation of patent claims on a software system for managing background investigations. The court held that the claims were “directed to the abstract idea of performing a background check” and lacked an inventive concept because they required nothing more than “conventional computer and network components operating according to their ordinary functions.” The court also clarified that district courts have jurisdiction to invalidate only those claims actually being asserted by the patentee.

Beteiro, LLC v. DraftKings Inc., 104 F.4th 1350 (Fed. Cir. 2024) (Dyk, Prost, Stark): The court affirmed a pleadings-stage invalidation of several mobile gambling patents. At Alice step one, the court concluded that the claims were “directed to the abstract idea of ‘exchanging information concerning a bet and allowing or disallowing the bet based on where the user is located.’” The claims, the court explained, exhibited four “features that are well-settled indicators of abstractness”: (i) they recited generic steps related to the detection, processing, and transmission of information; (ii) they were drafted using “result-focused functional language”; (iii) they were similar to claims found ineligible in previous cases insofar as they related to “methods of providing particularized information to individuals based on their location”; (iv) they were analogous to “longstanding ‘real-world’ (‘brick and mortar’) activities.” And, at Alice step two, the court held that the claims lacked an inventive concept because they simply described the execution of the abstract idea with generic computer components.

Contour IP Holding LLC v. GoPro, Inc., 113 F.4th 1373 (Fed. Cir. 2024) (Prost, Schall, Reyna): The court reversed a summary judgment ruling that patents related to portable point-of-view video cameras were ineligible. The asserted claims recited a camera that was configured to simultaneously generate video recordings in two formats—one low-quality format for real-time transmission to the user’s mobile phone and one high-quality format stored on the camera for later viewing. The court held that this feature of the claims “provide[d] a technological improvement to the real time viewing capabilities of the POV camera’s recordings on a remote device” and thus that the claims were “directed to a specific means that improves the relevant technology”—not an abstract idea.

This article appeared in the 2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions report.