Jason Bourgeois
IP Portfolio Manager
Contact: [email protected]
On March 20th in the U.S. District Court for the Eastern District of Texas Judge Gilstrap denied LG’s Motion for Summary Judgement of Invalidity in Core Wireless Licensing S.A.R.L v. LG Electronics, Inc. This represents an important win for patents in the software space, particularly patents that improve computers with new graphical user interfaces, or GUIs. In denying the motion, the Court examined claim 1 of U.S. Patent No. 8,713,476 in light of Alice and Mayo. Claim 1 is reproduced below:
A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an un-launched state.
Like the majority of accused infringers post-Alice, LG took a free shot at destroying the patent via the murky judicial exception to 35 USC 101. LG argued that the claim failed the first step of the Alice and Mayo inquiry because it is directed to an abstract concept. Specifically, LG argued that “displaying an application summary window while the application is an unlaunched state” is an abstract concept, because in an infringer’s mind, all ideas are abstract ideas and cannot be patented. LG further alleged that claim 1 fails step two of the inquiry because the menus pointed to by Core Wireless were “previously known” and “entirely normal and common place in these display situations” at the time of patenting. In summary, LG argued the claim terms “merely append routine and conventional steps to an abstract idea.”
Before rejecting LG’s arguments, the Court re-emphasized the Supreme Court’s position that courts must “tread carefully in construing this exclusionary principle [i.e. avoiding pre-emption] lest it swallow all of patent law”. The Court then noted that “[t]he concepts of ‘application,’ ‘summary window,’ and ‘unlaunched state'” are specific to devices like computers and that there is no analog for these concepts in the non-digital/pre-computing world. Next, the Court re-stated the Federal Circuit’s point in DDR that claims “‘rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks’ are concrete, not abstract.” The Court found that claim 1 met the standard of step one of the Alice inquiry because it does not “merely recite an abstract idea” as it “improve[s] the functioning of the computer itself” and is divisible from generic computer limitations. Core Wireless’s claim is not the type of claim that has been routinely found ineligible under Alice—one that claims a pre-computer (or pre-internet) activity and merely adds the limitation ‘do it on a computer (or webpage).
The Court went on to explain that even though LG failed to show the claim was directed to an abstract idea, LG’s motion would still fail because the claim passes the machine-or-transformation test. The claims are directed to a machine (e.g. a computing device comprising a display screen) and the remainder of the claim would make no sense outside of that machine.
This decision is an important win for software patents and GUI software engineers who have dedicated their careers to improving how information is displayed to users of computer systems. After Alice, infringers routinely file motions to destroy any patent related to computing, and most motions are granted. Other infringers have resorted to challenging GUIs under the USPTO’s covered business method review (CBMR), even though the claims are clearly directed to an improved GUI and not a business method. (See here). This decision pushes back against a judicial exception that is swallowing the statutory right to protect improving the way we interact with and view data—a task which is the result of human ingenuity.
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