- AFFINITY LABS OF TEXAS, LLC v. DIRECTV, LLC (Fed. Cir. 2016) (P) – Functionally described display of information does not amount to significantly more than an abstract idea
- AFFINITY LABS OF TEXAS, LLC v. AMAZON.COM INC. (Fed. Cir. 2016) (P) – User-based customization does not by itself amount to significantly more than an abstract idea
- COX COMMUNICATIONS, INC. v. SPRINT COMMUNICATION COMPANY (Fed. Cir. 2016) (P) – An ambiguous but inconsequential claim term does not render the claim as a whole indefinite
- CLASSCO, INC. v. APPLE, INC. (Fed. Cir. 2016) (P) – A change in functionality does not automatically negate an obvious combination of prior art elements
- YEDA RESEARCH AND DEVELOPMENT v. ABBOTT GMBH & CO. KG (Fed. Cir. 2016) (P) – Identifying an invention by its known properties may support claims to undisclosed yet inherent properties
A mere functionally described display of information does not amount to significantly more than an abstract idea. Here, for example, the novel use of a downloadable application for out-of-region delivery of regional broadcast content was found to lack an inventive concept under Alice step two because the claims recited only the display of the content without defining how the content gets displayed. “The essential advance … is nothing but a functionally described display of information.” It may therefore be best to claim more specifically how information is manipulated, displayed, etc., rather than merely the result.
Background / Facts: The patent being asserted here is directed to streaming regional broadcast signals to cellular telephones located outside the region served by the regional broadcaster. The claims recite a cellular telephone that (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. It is not disputed that the use of a downloadable application for presenting a graphical user interface on a cellular telephone capable of listing contents for streaming was novel as of the priority date of the patent.
Issue(s): Whether the novel use of such a downloadable application constitutes an “inventive concept” sufficient to transform the abstract idea of out-of-region delivery of regional broadcasting into a patent-eligible application of that abstract idea.
Holding(s): No. “The essential advance is not in the process of downloading applications, but only in the content of this particular application, and that is nothing but a functionally described display of information. That description does not cross out of the abstract idea category.  There is no further specification of a particular technology for getting the defined content displayed. Thus, the user-downloadable application does not constitute an inventive concept sufficient to render the claims patent-eligible.”
User-based customization does not by itself amount to significantly more than an abstract idea. Here, for example, a network-based media system having “a customized user interface page for [a] given user” was found to be nothing more than an abstract idea because neither the specification nor the claims were limited to any particular form of customization. “That disclosure and the accompanying ‘customized user interface’ limitation in the claim do not constitute a concrete application of the abstract idea.” It may therefore be best to claim more specifically how something is customized rather than merely the result of customization.
Background / Facts: The patent being asserted here is directed to a network-based media system with a “customized user interface,” in which the system delivers streaming content from a network-based resource upon demand to a handheld wireless electronic device having a graphical user interface.
Issue(s): Whether the customized user interface supplies the inventive concept to the claimed invention.
Holding(s): No. “The term ‘customized user interface,’ as used in the  patent, is not limited to any particular form of customization, but covers the general idea of customizing a user interface. Like the basic concept of tailoring content to a user, as in Intellectual Ventures I, the basic concept of customizing a user interface is an abstract idea.” Moreover, “neither the claim nor the specification reveals any concrete way of employing a customized user interface. The specification simply states that a user interface can be customized ‘in a plurality of ways’ by allowing users to select and receive ‘on-demand customized audio information.’  That disclosure and the accompanying ‘customized user interface’ limitation in the claim do not constitute a concrete application of the abstract idea of delivering content to a wireless device and thus do not embody an ‘inventive concept,’ as that term has been used in the Mayo/Alice line of cases.”
An ambiguous but inconsequential claim term does not render the claim as a whole indefinite under § 112, ¶ 2. Here, for example, the claimed use of a “processing system” as part of a method where the point of novelty lies elsewhere was found to be incapable of preventing the claims from informing those skilled in the art about the scope of the invention with reasonable certainty. “[T]he dispositive question in an indefiniteness inquiry is whether the claims, not particular claim terms, … fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.“ This would be a good case to consult and cite in response to an indefiniteness rejection focusing on relatively trivial terminology.
Background / Facts: The patents being asserted here are directed to developments in voice-over-IP technology. The claims recite the use of a “processing system” as part of a method in which the point of novelty lies in receiving a signal from a traditional telephone network and processing information related to that voice call to select the path that the voice call should take through the data network.
Issue(s): Whether the claim term “processing system” renders the asserted patents indefinite under 35 U.S.C. 112, ¶ 2.
Holding(s): No. “This case presents a peculiar scenario: the sole source of indefiniteness that [the accused infringer] complains of, ‘processing system,’ plays no discernable role in defining the scope of the claims. … If ‘processing system’ does not discernably alter the scope of the claims, it is difficult to see how this term would prevent the claims (the remainder of which [the accused infringer] does not challenge on indefiniteness grounds) from serving their notice function under § 112, ¶ 2. As Nautilus instructs, the dispositive question in an indefiniteness inquiry is whether the ‘claims,’ not particular claim terms, ‘read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.“
A change in specific functionality does not automatically negate a combination of prior art elements in establishing obviousness. Here, for example, modifying a prior art reference’s telephone speaker to perform the claimed announcing of a caller’s identity as well as its conventional voice signal functionality was found to be obvious because the prior art elsewhere taught that telephone speakers could perform multiple functions, even though the prior art did not specifically mention a caller identification function. “KSR does not require that a combination only unite old elements without changing their respective functions.” This would be a good case to consult before responding to an obviousness rejection in which the functionality of one of the components changes.
Background / Facts: The patent on appeal here from reexamination proceedings at the PTO is directed to a call-screening system that verbally announces a caller’s identity before the call is connected. Because the system uses the same “audio transducer” (i.e., speaker) for announcing both a caller’s identity and telephone voice signals, the purported invention does not require a special telephone, auxiliary display terminal, or speaker to let users screen calls. The PTO acknowledged that the prior art did not disclose using a single speaker for announcing both voice signals and identity information.
Issue(s): Whether this feature would have nevertheless been obvious given the prior art’s disclosure that a speaker in a telephone system can desirably produce audio derived from multiple types of data within a telephone system.
Holding(s): Yes. “The rationale of KSR does not support [the patentee’s] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B. To the contrary, KSR instructs that the obviousness inquiry requires a flexible approach.  Here, the Board faithfully applied this flexible approach to find that the combination of [prior art] ‘would have resulted in no more than [a] predictable result.’”