Claims Invalid Under § 101 Where Inventive Concept Itself Is Abstract

PersonalWeb Techs. LLC v. Google LLC, Nos. 2020-1543, 2020-1553, 2020-1554 (Fed. Cir. August 12, 2021)

The Federal Circuit affirmed the district court’s decision granting judgment on the pleadings that the claims were directed to abstract ideas and thus invalid under 35 U.S.C. § 101. The claims related to “data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.” These identifiers are generated by a mathematical algorithm, and the identifier changes when the data item’s content changes. The claims then recited “using such identifiers to perform various data-management functions.”

At step one of the two-step Alice/Mayo framework, the Federal Circuit agreed that the claims were directed to abstract ideas. Each step in the claimed methods reflected a concept that the Federal Circuit “already described as abstract” and involved “mental processes that ‘can be performed in the human mind’ or ‘using a pencil and paper’—a telltale sign of abstraction.” Further, the claimed steps considered together were still abstract because “stringing together the claimed steps by adding one abstract idea to another … amounts merely to the abstract idea of using a content-based identifier to perform an abstract data-management function.”

At step two, the Federal Circuit found that the “purported improvements … just restate the abstract ideas” and even if they “are not well-known, routine, or conventional, ‘[a] claim for a new abstract idea is still an abstract idea.’” The Federal Circuit also rejected that fact questions made judgment on the pleadings improper, holding “[w]hat is needed is an inventive concept in the non-abstract application realm,” but none of the purported improvements “fit that bill.” Thus, the Federal Circuit affirmed invalidity under § 101.

Read the full decision here.