CAFC Affirms Rule 12(b)(6) 101 Dismissal for Google in Precedential Ruling on Software Claims

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, January 22, issued a precedential decision affirming a district court ruling that granted Google’s motion to dismiss a patent owner’s infringement suit for failure to state a claim. The CAFC agreed with the district court that the software claims in question were directed to a patent-ineligible abstract idea. The opinion was authored by CAFC Chief Judge Moore and joined by Judges Hughes and Stoll.

U.S. Patent No. 7,679,637 LLC sued Google in the U.S. District Court for the Western District of Washington for infringing certain claims of its patent, titled “Time-shifted Web Conferencing.” Google moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), arguing the asserted claims are patent- ineligible under 35 U.S.C. § 101. The district court granted Google’s motion, finding that the claims were directed to the abstract idea of “playing back recorded content.”

On appeal to the CAFC, U.S. Patent No. 7,679,637 argued that this is an “over-generalization” of the claims, which recite a “specific asserted improvement that allows a presentation to be reviewed asynchronously . . . at the same time.” But the CAFC said even if it were to narrow the district court’s view of the claims, they are still directed to “the patent-ineligible abstract idea of allowing asynchronous review of presentations, rather than any specific technological improvement, because they do not ‘describe how the alleged goal of [asynchronous review] is achieved,’” citing to Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349, 1357 (Fed. Cir. 2023).

Analyzing the claim language at step one of the Alice-Mayo framework, the CAFC found that they recite what the claims do, but not how they do it. Neither do they contain any “specific technological improvement discernible to a skilled artisan from the patent or the prosecution history.” While the patent owner argued the claims “expressly explain how the systems need to be set up to accomplish the improvement,” the CAFC said “they do not explain how the client applications achieve the recited manipulation of the data streams to enable asynchronous review.”

Furthermore, the written description does not provide any greater insight, and instead “suggests the invention is nothing more than the abstract idea of applying known time-shifting functions to web-conferencing systems to solve ‘great inefficiencies’ resulting from participants waiting for others to join a presentation or from participants missing part of a presentation.”

The opinion distinguished the case from Contour IP Holding LLC v. GoPro, Inc., noting that there, the claims disclosed “improving POV camera technology through specific means of generating high- and low-quality video streams in parallel and transferring a low-quality video stream to a remote device.” The present case is more like Hawk Technology Systems, where the CAFC agreed with a district court’s finding that Hawk’s U.S. Patent No. 10,499,091, titled “high-quality, reduced data rate streaming video product and monitoring system,” should be dismissed for failure to state a claim because the patent was invalid as ineligible. The CAFC held those claims, which also involved the manipulation of multiple data streams “fail[ed] to recite a specific solution to make the alleged improvement—conserving bandwidth while preserving quality—‘concrete’ and were ‘recited at such a level of result-oriented generality that those claims amount[ed] to a mere implementation of an abstract idea.’”

U.S. Patent No. 7,679,637 LLC also attempted to argue that Google uses “functional claiming” in its own video conferencing patents and therefore “necessarily believes this approach to claim drafting does not result in subject matter ineligible claims,” but the CAFC said that the “subject matter eligibility of Google’s patent claims is not before us and has no bearing on our analysis of the ’637 patent.” Moore added: “Moreover, we reject the notion that the mere existence of factually distinguishable Google-owned patents somehow amounts to a sweeping concession by Google that all patents involving functional claiming approaches are necessarily patent-eligible.”

Moving to step two of Alice-Mayo, the patent owner argued the district court overlooked the two inventive concepts contained in the claims, specifically: “1) a two client application system allowing for the manipulation of multiple data streams and (2) a ‘time-scale modification component.’”

But the CAFC said neither concept transforms the claims into something that is patent eligible. The patent owner’s arguments merely repeat its step one assertions, said the opinion, and “the claimed client applications are conventional, well-known components, operating according to their ordinary functions to manipulate conventional data streams.”

Finally, the patent owner argued that the district court improperly decided patent eligibility at the motion to dismiss stage and should have been allowed to amend its complaint, but the CAFC said the patent owner made no factual allegations that would preclude dismissal. “No amendment to the complaint can alter what the ’637 patent itself states regarding the conventionality of the client applications, data streams, and time-scale modification components discussed in the eligibility analysis detailed above,” said the opinion.

The CAFC lastly rejected the patent owner’s argument that Google’s motion to dismiss should have been treated as a summary judgment motion because Google relied on facts outside the complaint to establish what was well-known, routine and conventional and because the district court also should have conducted claim construction prior to dismissal. The district court “was clear it did not rely on any extra-pleading materials” in coming to its decision to grant the motion to dismiss, said the CAFC, and claim construction was not necessary because the patent owner “never proposed any constructions or explained how a proposed construction would change the patent-eligibility analysis.”

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