July 14, 2015
In Internet Patents Corp. v. Active Networks, the Federal Circuit affirmed yet another dismissal of a patent infringement lawsuit due to the asserted patent being invalid for lacking patent eligible subject matter under 35 U.S.C. § 101. Here, the sole patent-in-suit, U.S. Patent No. 7,707,505 (the “’505 Patent”), was generally directed to the use of a web browser Back and Forth navigational functionalities without data loss in an online application consisting of dynamically generated webpages. Claim 1 of the ’505 Patent recites:
A method of providing an intelligent user interface to an online application comprising the steps of:
furnishing a plurality of icons on a web page displayed to a user of a web browser, wherein each of said icons is a hyperlink to a dynamically generated online application form set, and wherein said web browser comprises Back and Forward navigation functionalities;
displaying said dynamically generated online application form set in response to the activation of said hyperlink, wherein said dynamically generated online application form set comprises a state determined by at least one user input; and
maintaining said state upon the activation of another of said icons, wherein said maintaining allows use of said Back and Forward navigation functionalities without loss of said state.
In analyzing claim 1 of the ’505 Patent for patent eligibility, the Federal Circuit identified the “maintaining said state” step as being the most important aspect of the claim where the alleged point of novelty would be found, and focused its attention there. The Court then looked for, but could not find, an “inventive concept” that went beyond the “well-understood” and “common” abstract idea of retaining information in the navigation of online forms in this final step of the claimed method. The Court was particularly troubled by the fact that the “maintaining said state” limitation merely describes the effect or result of the step, without providing any further limitations as how the claimed method can actually be accomplished. Thus, claim 1 was found to be invalid under 35 U.S.C. § 101. All of the other claims of the ’505 patent were invalidated on similar grounds.
Notably, the Federal Circuit’s recent decision in Williamson v. Citrix Online LLC also attacked the use of functional claiming in patents. In that case, the Federal Circuit, acting en banc, overruled a long line if precedent to relax the standard to invoke the means-plus-function provisions of 35 U.S.C. §112(f). Together, the Internet Patents and Williamson decisions will undoubtedly give patent litigators a couple of new arrows in their quiver to attack patents that including purely functional claim limitations.