By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC et al. v. Symantec Corp. et al., C.A. No. 13-440-LPS (D.Del. February 13, 2017), the Court granted Defendants’ motion for summary judgment of patent ineligibility upon finding that the claims at issue – claims 25 and 33 of U.S. Patent No. 5,537,533 (“the ‘533 patent”) – (1) are directed to an abstract idea, and (2) fail to include any inventive concept sufficient to elevate them into patent-eligible applications of the abstract idea of backing up data. Id. at *3-11.
In so ruling, the Court agreed with Symantec that the claims at issue simply recite the basic steps of copying data from one location to another several times and sending a confirmation that the data has been received; and this is something humans and institutions have been doing for centuries, even before computers. Id. at *8. The Court also agreed that, although the claims invoke existing computer functionality as a tool to better back up data, the claims do not themselves purport to improve anything about the computer or network itself. Id. at *8-9. For example, unlike Enfish and McRo, the claims do not improve the way computers store information or otherwise function and do not otherwise provide an inventive concept. Id. Therefore, the court agreed with Symantec that the claims lack anything sufficient to transform the abstract idea into patent-eligible subject matter. Id.
A copy of the Memorandum Opinion is attached.
The general take away is that simply citing to generic computer components or functionality when describing an abstract idea, law of nature, or physical phenomena without some new, additional improvement, unique combination or something else that can be considered an inventive concept is not going to transform patent-ineligible subject matter into patent-eligible under 35 U.S.C. §101. Whenever a patent possibly claims an abstract idea, law of nature or physical phenomena, an analysis of the claims under the two-step process set forth in Mayo should be performed.