Intellectual Ventures I LLC v. Capital One Financial Corp. , 850 F.3d 1332 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
INTELLECTUAL VENTURES I LLC,
INTELLECTUAL VENTURES II LLC,
Plaintiffs-Appellants
v.
CAPITAL ONE FINANCIAL CORPORATION,
CAPITAL ONE BANK (USA), NATIONAL
ASSOCIATION, CAPITAL ONE, NATIONAL
ASSOCIATION,
Defendants-Appellees
______________________
2016-1077
______________________
Appeal from the United States District Court for the
District of Maryland in No. 8:14-cv-00111-PWG, Judge
Paul W. Grimm.
______________________
Decided: March 7, 2017
______________________
IAN NEVILLE FEINBERG, Feinberg Day Alberti &
Thompson LLP, Menlo Park, CA, argued for plaintiffs-
appellants. Also represented by MARC BELLOLI,
ELIZABETH DAY, CLAYTON W. THOMPSON, II; ERIC F.
CITRON, Goldstein & Russell, P.C., Bethesda, MD.
MATTHEW J. MOORE, Latham & Watkins LLP, Wash-
ington, DC, argued for defendants-appellees. Also repre-
2 INTELLECTUAL VENTURES I LLC V. CAPITAL ONE
sented by GABRIEL BELL, ADAM MICHAEL GREENFIELD;
JEFFREY G. HOMRIG, Menlo Park, CA; ROBERT A. ANGLE,
DABNEY JEFFERSON CARR, IV, Troutman Sanders LLP,
Richmond, VA; KENNETH R. ADAMO, DAVID WILLIAM
HIGER, Kirkland & Ellis LLP, Chicago, IL.
______________________
Before PROST, Chief Judge, WALLACH and CHEN, Circuit
Judges.
PROST, Chief Judge.
Intellectual Ventures I LLC and Intellectual Ventures
II LLC (collectively, “IV”) appeal from a final decision of
the United States District Court for the District of Mary-
land finding all claims of U.S. Patent No. 7,984,081 (“’081
patent”) and U.S. Patent No. 6,546,002 (“’002 patent”)
ineligible under 35 U.S.C. § 101 and barring IV from
pursuing its infringement claims of U.S. Patent No.
6,715,084 (“’084 patent”) under a collateral estoppel (issue
preclusion) theory. 1 For the reasons discussed below, we
affirm.
I
IV sued Capital One Financial Corporation, Capital
One Bank (USA), National Association, Capital One, and
National Association (collectively, “Capital One”), alleging
infringement of the ’084 patent, the ’081 patent, and the
’002 patent (collectively, “patents-in-suit”) in the United
States District Court for the District of Maryland. In
response, Capital One asserted antitrust counterclaims
against IV under the Sherman Act and moved for sum-
1 IV additionally appealed the district court’s find-
ing of patent ineligibility of U.S. Patent No. 6,314,409. IV,
however, withdrew this patent from appeal. IV’s Mot. to
Withdraw U.S. Patent No. 6,314,409 as an Appellate
Issue at 2.
INTELLECTUAL VENTURES I LLC V. CAPITAL ONE 3
mary judgment on IV’s infringement claims, arguing that
the ’081 and ’002 patents are invalid under 35 U.S.C.
§ 101.
In a related proceeding, the United States District
Court for the Southern District of New York entered a
partial summary judgment order of ineligibility under
§ 101 for the ’084 patent. See Intellectual Ventures II,
LLC v. JP Morgan Chase & Co., No. 13-cv-3777-AKH,
2015 WL 1941331, at *17 (S.D.N.Y. Apr. 28, 2015)
(“JPMC”); J.A. 1343–74. Relying on the JPMC court’s
partial summary judgment order, Capital One moved for
summary judgment in the District of Maryland under a
collateral estoppel theory to bar IV’s infringement action
on those patents.
In response to Capital One’s summary judgment mo-
tions, the district court invalidated the ’081 and ’002
patents under § 101 and barred IV from proceeding on its
infringement claims as to the ’084 patent under a collat-
eral estoppel theory based on the JPMC court’s findings.
Having granted Capital One’s summary judgment motion
on collateral estoppel grounds, the District of Maryland
elected not to independently reach the merits of the ’084
patent’s eligibility under § 101. After disposing of the
patents-in-suit, and over IV’s objection, the district court
certified its judgment under Federal Rule of Civil Proce-
dure 54(b) so that this appeal could proceed concurrently
with Capital One’s antitrust counterclaims in the District
of Maryland. 2 IV filed its appeal. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
2 In the related JPMC matter, although the South-
ern District of New York rendered a finding of invalidity
at summary judgment as to the ’084 patent under § 101, it
denied IV’s request for Rule 54 certification and immedi-
4 INTELLECTUAL VENTURES I LLC V. CAPITAL ONE
II
On appeal, IV raises a number of issues regarding the
proceedings below: (1) IV argues that the district court
abused its discretion by certifying this appeal under Rule
54; (2) IV appeals the district court’s determination that it
is collaterally estopped from pursuing its patent in-
fringement claims as to the ’084 patent; and (3) IV ap-
peals the district court’s determination that the ’081 and
’002 patents are invalid under § 101. We take each issue
in turn.
A
We review the district court’s decision to certify a par-
tial final judgment under Rule 54(b) for an abuse of
discretion. See Sears, Roebuck & Co. v. Mackey, 351 U.S.
427, 437 (1956). On appeal, IV argues that the district
court erred by merely providing a two-sentence Rule 54(b)
certification statement without any specific findings or
reasoning to support its conclusion. IV also asserts that
because the district court did not make any findings or
provide a rationale, any deference we owe to the district
court “is nullified” under Braswell Shipyards, Inc. v.
Beazer E., Inc., 2 F.3d 1331, 1335–36 (4th Cir. 1993).
Aside from attacking the sufficiency of the district court’s
reasoning, IV argues that the close interrelationship
between its infringement claims and Capital One’s anti-
trust counterclaims weighs against certification. IV
therefore maintains that we should vacate the certifica-
tion and remand the appeal.
Capital One responds that the district court’s express
finding of “no just reason for delay” supports its decision
to certify. It also cites the district court’s additional
certification reasoning in response to IV’s motion to
ate appeal. Thus, IV has not to date appealed the merits
of that court’s § 101 findings.
INTELLECTUAL VENTURES I LLC V. CAPITAL ONE 5
vacate the Rule 54(b) judgment. See J.A. 1728 (explaining
why Rule 54(b) certification would create a more efficient
use of judicial resources under this case’s facts and proce-
dural posture). Regarding its counterclaims, Capital One
argues that the antitrust issues are not sufficiently inter-
related to IV’s infringement claims because its counter-
claims implicate IV’s patent portfolio, which encompasses
roughly 3,500 patents.
We agree with Capital One that the district court did
not abuse its discretion in certifying the appeal under
Rule 54(b). Under that rule, “[w]hen an action presents
more than one claim for relief . . . the court may direct
entry of final judgment as to one or more, but fewer than
all, claims or parties only if the court expressly deter-
mines that there is no just reason for delay.” Fed. R. Civ.
P. 54(b).
First, regarding the sufficiency of the district court’s
findings, we observe that the district court set forth its
reasoning for certification in two separate, independent
orders. See J.A. 55 (concluding that “there is no just
reason for delay[ing]” entry of judgment with the anti-
trust claims still pending in the initial motion); J.A. 1727–
28 (weighing the potential benefits of reserving final
judgment under a Rule 60 motion and concluding that
judicial economy supports certification). Although the
district court’s initial ruling did not set forth a lengthy
analysis in support of certification, it expressly deter-
mined that there was no just reason for delay. J.A. 55.
Beyond this, the district court subsequently explained
why judicial economy supports its initial determination. 3
3 In its reply brief, IV argues—without support—
that a district court cannot use a subsequent order to
“cure [the] defect” in its initial analysis. Reply Br. 24–25.
Not so. The Fourth Circuit merely requires that the
district court state its findings on the record or in its
6 INTELLECTUAL VENTURES I LLC V. CAPITAL ONE
J.A. 1728. Regarding the sufficiency of its analysis,
therefore, we conclude that the district court did not
abuse its discretion because it met the standard set forth
by the rule.
Second, we review the extent to which the existence of
Capital One’s counterclaims affect the analysis. To do so,
we may consider—among other factors—“the relationship
between the adjudicated and unadjudicated claims.”
Braswell Shipyards, 2 F.3d at 1335–36. Here, Capital
One’s antitrust counterclaims implicate IV’s patent port-
folio of roughly 3,500 patents. J.A. 3026–27. Yet IV
asserts only a narrow subset (the patents-in-suit) of that
broader portfolio. Id. Further, the scope of Capital One’s
antitrust counterclaims transcends issues of mere in-
fringement. See id. (alleging, among other things, wrong-
ful conduct, concealing the scope of its portfolio, and
demanding excessive licensing rates). Indeed, the mere
existence of some factual overlap between the parties’
claims and counterclaims does not necessarily lead to the
conclusion that the district court abused its discretion.
See, e.g., W.L. Gore & Assocs. v. Int’l Med. Prosthetics
Research Assocs., 975 F.2d 858, 864 (Fed. Cir. 1992)
(recognizing that the factual overlap on one aspect of a
counterclaim is not adequate to show an abuse of discre-
tion). Under these facts, we conclude that the district
court did not abuse its discretion given the tenuous rela-
tionship between the claims on appeal and counterclaims
that remain. We have considered IV’s remaining argu-
ments, but find them unpersuasive. As a result, we
affirm the district court and entertain the remaining
issues on appeal.
order. Braswell Shipyards, 2 F.3d at 1336. This is pre-
cisely what it did. J.A. 55, 1728.
INTELLECTUAL VENTURES I LLC V. CAPITAL ONE 7
B
We review issues of preclusion de novo, applying the
law of the regional circuit. Aspex Eyewear, Inc. v. Zenni
Optical Inc., 713 F.3d 1377, 1380 (Fed. Cir. 2013). Simi-
larly, we review a district court’s summary judgment
ruling under the law of the regional circuit, DDR Hold-
ings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed.
Cir. 2014). The Fourth Circuit reviews the entry of sum-
mary judgment de novo. Sylvia Dev. Corp. v. Calvert
Cnty. Md., 48 F.3d 810, 817 (4th Cir. 1995). The Fourth
Circuit has established five requirements for collateral
estoppel. See Ramsay v. U.S. Immigration & Naturaliza-
tion Serv., 14 F.3d 206, 210 (4th Cir. 1994) (requiring that
the issue in the prior proceeding be identical, actually
determined, necessary, final, and that the affected party
was afforded a full and fair opportunity to litigate the
issue). Here, the parties only dispute the finality re-
quirement, for which the Fourth Circuit requires a “final
and valid” judgment. In re Microsoft Corp. Antitrust
Litig., 355 F.3d 322, 326 (4th Cir. 2004).
On appeal, IV challenges the district court’s grant of
partial summary judgment in which the court determined
that IV was collaterally estopped from pursuing its patent
infringement claims as to the ’084 patent. It argues that
the district court erred because it based its collateral
estoppel findings on a partial summary judgment order by
the JPMC court, rather than a final judgment. In support
of its position, IV cites Vardon Golf Co. v. Karsten Manu-
facturing Corp., 294 F.3d 1330 (Fed. Cir. 2002). In that
case—applying Seventh Circuit law—we held a partial
summary judgment order does not meet the finality
requirement of collateral estoppel. See id. at 1333 (basing
collateral estoppel necessarily on a decision that is “im-
mune . . . to reversal or amendment”) (citation omitted).
We conclude that under Fourth Circuit law, collateral
estoppel attaches in light of the JPMC court’s partial
8 INTELLECTUAL VENTURES I LLC V. CAPITAL ONE
summary judgment order. At the outset, we observe that
IV’s reliance on Vardon is misplaced because in that case,
we applied the law of the Seventh Circuit. See Vardon,
294 F.3d at 1333 (applying an “immune . . . to reversal or
amendment” standard for collateral estoppel to attach).
The Fourth Circuit, however, applies a less rigid test of
finality. See Swentek v. USAIR, Inc., 830 F.2d 552 (4th
Cir. 1987) (abrogated on other grounds). Under Swentek,
finality neither demands final judgment, nor requires a
party’s appeal. Id. at 561. Rather, “[f]inality for purposes
of collateral estoppel is a flexible concept and ‘may mean
little more than that the litigation of a particular issue
has reached such a stage that a court sees no really good
reason for permitting it to be litigated again.’” Id. (cita-
tion omitted). Indeed, “[a]s long as the prior adjudication
of the identical issue is conclusive, [the court does not]
require the issue to be tried again because it lacked the
formality of an express order and a ‘no just reason for
delay’ determination.” See id. (noting that a trial judge
need not enter judgment under Rule 54 and await appeal
before ascribing a preclusive effect) (citation omitted).
Applying the Fourth Circuit’s test, we conclude that
the JPMC court’s partial summary judgment order met
the finality prong for the purposes of collateral estoppel.
Here, the JPMC court granted Capital One’s partial
summary judgment motion after considering the parties’
briefing and oral argument. 2015 WL 1941331, at *17.
Indeed, in deciding JPMC, the United States District
Court for the Southern District of New York “denied as
moot” additional discovery motions related to the ’084
patent. Id. Although the district court has not yet en-
tered its judgment on IV’s claims, it has nothing left to
resolve absent a reversal and remand on appeal. Because
this particular issue “has reached such a stage that [the
district court would] see[] no really good reason for per-
mitting it to be litigated again,’” the JPMC court’s order
meets the finality requirement under Fourth Circuit
INTELLECTUAL VENTURES I LLC V. CAPITAL ONE 9
precedent. Swentek, 830 F.2d at 561 (citation omitted).
Thus, we conclude that collateral estoppel attaches as a
result of the JPMC court’s partial summary judgment
order invalidating the ’084 patent.
C
The Fourth Circuit reviews the grant or denial of
summary judgment de novo. Sylvia Dev. Corp., 48 F.3d at
817. Patent eligibility under § 101 is an issue of law that
we review without deference. OIP Techs., Inc. v. Ama-
zon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015).
Section 101 of the Patent Act defines patent-eligible
subject matter as follows: “Whoever invents or discovers
any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improve-
ment thereof, may obtain a patent therefore, subject to
the conditions and requirements of this title.” 35 U.S.C.
§ 101. In interpreting this statutory provision, the Su-
preme Court has held that its broad language is subject to
an implicit exception for “laws of nature, natural phenom-
ena, and abstract ideas,” which are not patentable. Alice
Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014).
To determine whether the exception applies, the Su-
preme Court has set forth a two-step inquiry. Specifical-
ly, a court must determine: (1) whether the claim is
directed to a patent-ineligible concept, i.e., a law of na-
ture, a natural phenomenon, or an abstract idea; and if so,
(2) whether the elements of the claim, considered “both
individually and ‘as an ordered combination,’” add enough
to “‘transform the nature of the claim’ into a patent-
eligible application.” Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297–98
(2012)). Applying this two-step inquiry to claims chal-
lenged under the abstract idea exception, we typically
refer to step one as the “abstract idea” step and step two
as the “inventive concept” step. Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
10 INTELLECTUAL VENTURES I LLC V. CAPITAL ONE
Under the “abstract idea” step we evaluate “the ‘focus
of the claimed advance over the prior art’ to determine if
the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Id. If the claim is directed to a patent-
ineligible concept, we proceed to the “inventive concept”
step. For that step we “look with more specificity at what
the claim elements add, in order to determine ‘whether
they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is di-
rected.” Id. at 1258 (quoting Elec. Power Grp. v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
On appeal, IV challenges the district court’s determi-
nations that the ’081 and ’002 patents fail under step one
and step two of Alice under § 101.
THE ’081 PATENT
The ’081 patent consists of twenty-nine claims relat-
ing to methods, systems, and apparatuses for dynamically
managing eXtensible Markup Language (“XML”) data.
XML is a specialized mark-up computer language devel-
oped in the mid-1990s that defines a set of rules for
encoding documents in both a human- and machine-
readable format. J.A. 663–64. Given this unique encod-
ing, XML documents have specific format requirements
for the data contained in the document, and tags that
define what data the system stores at each position within
an XML document. See J.A. 895 (discussing the use of
nested structures to preserve the relationship of data
within a given XML document). The ’081 patent explains
that companies frequently use XML documents to publish
various types of information that customers and partners
use, such as invoices, purchase orders, and price lists.
Because XML users can create their own unique formats
using these XML rules, not all formats are compatible.
Therefore, companies attempting to share these types of
XML documents may find them incompatible with their
own XML formats. Resolving this conflict, the ’081 patent
INTELLECTUAL VENTURES I LLC V. CAPITAL ONE 11
contends, was a difficult task that required specialized
programming skills to manipulate and transfer XML
documents into the desired format.
Thus, the ’081 patent identified what its inventor per-
ceived as a need to “allow[] the user to view and update
XML documents in different formats, and allow[] the user
to manipulate the data and perform actions without
programming skills.” ’081 patent col. 1 ll. 45–48. To
fulfill this need, the patent describes presenting the user
with a second document—the “dynamic document”—
which is based upon data extracted from the original XML
document. According to the patent, the user can then
make changes to the data displayed in the dynamic doc-
ument and the changes will be dynamically propagated
back into the original XML document (despite the
acknowledged compatibility problems with such docu-
ments). Viewed within this framework, we turn to the
specific language of the claims. For convenience, we
reproduce claim 21 below. 4
21. An apparatus for manipulating XML docu-
ments, comprising:
a processor;
a component that organizes data components of
one or more XML documents into data objects;
a component that identifies a plurality of primary
record types for the XML documents;
4 Although IV did not expressly concede that claim
21 is representative of the claimed invention, it acknowl-
edged that the invention “is memorialized in [this claim].”
Appellants’ Br. 11. Accordingly, we conclude that claim
21 is representative. See also J.A. 12 (asserting that the
parties agreed that claim 21 is representative).
12 INTELLECTUAL VENTURES I LLC V. CAPITAL ONE
a component that maps the data components of
each data object to one of the plurality of primary
record types;
a component that organizes the instances of the
plurality of primary record types into a hierarchy
to form a management record type;
a component that defines a dynamic document for
display of an instance of a management record
type through a user interface; and
a component that detects modification of the data
in the dynamic document via the user interface,
and in response thereto modifies a data compo-
nent in an XML document.
’081 patent col. 20 ll. 43–61.
In short, the ’081 patent concerns a system and meth-
od for editing XML documents. Stripped of excess verbi-
age, the claim creates the dynamic document based upon
“management record types” (“MRTs”) and “primary record
types” (“PRTs”). The inventor coined these terms to
describe the organizational structure of the data at issue.
A PRT is a simple data structure that contains unspeci-
fied data extracted from XML documents and an MRT is
merely a collection of PRTs. ’081 patent col. 2 ll. 5–12. A
user interface then displays the dynamic document to the
user to permit the user to make modifications to the
document. In response to these changes made to the
dynamic document, the system somehow modifies the
underlying XML document.
1
We find that, under step one, the claims of the ’081
patent are abstract. We conclude that the patent claims
are, at their core, directed to the abstract idea of collect-
ing, displaying, and manipulating data.
INTELLECTUAL VENTURES I LLC V. CAPITAL ONE 13
We have held other patent claims ineligible under
§ 101 for reciting similar data manipulation steps. For
instance, in Content Extraction and Transmission LLC v.
Wells Fargo Bank, National Ass’n, we held the concept of
“1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a
memory” abstract. 776 F.3d 1343, 1347 (Fed. Cir. 2014).
In particular, the invention there involved extracting data
from a document, entering the data into appropriate data
fields, and storing the data in memory. Id. at 1345. In
Intellectual Ventures I LLC v. Capital One Bank (USA),
we concluded that customizing information and present-
ing it to users based on particular characteristics is ab-
stract as well. 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(“Intellectual Ventures I”). And in Electric Power Group,
we explained that an invention directed to collection,
manipulation, and display of data was an abstract pro-
cess. 830 F.3d at 1353–54 (Fed. Cir. 2016). Here, the ’081
patent’s concept related to the collection, display, and
manipulation of data is similarly abstract.
According to IV, the ’081 patent provides a concrete
solution to a problem in computer programming, i.e., how
to “dynamically manage multiple sets of XML docu-
ments.” Appellants’ Br. 31 (citation omitted). IV main-
tains that because the invention relates to a specialized
computer language—XML—and renders otherwise in-
compatible documents compatible through a unique
dynamic document based on MRTs and PRTs, it is neither
abstract, nor an age-old idea like Alice’s “intermediated
settlement.” Appellants’ Br. 32 (quoting Alice, 134 S. Ct.
at 2359).
IV’s characterization, however, does not change the
result. Although IV correctly observes that the ’081
patent applies to XML documents in particular (rather
than any other type of document), at best, this limits the
invention to a technological environment for which to
apply the underlying abstract concept. But such limita-
14 INTELLECTUAL VENTURES I LLC V. CAPITAL ONE
tions do not make an abstract concept any less abstract
under step one. Intellectual Ventures I, 792 F.3d at 1366.
As the specification recognizes, companies have frequent-
ly employed XML documents in routine business transac-
tions. ’081 patent col. 1 ll. 28–36. Thus, the patent’s
recitation of XML documents specifically, does little more
than restrict the invention’s field of use. Such limitations
do not render an otherwise abstract concept any less
abstract. Affinity, 838 F.3d at 1259.
IV’s identification of the ’081 patent’s specific data
structures and objects (PRTs and MRTs) also does not
change our analysis under this step. In particular, IV
argues that the ’081 patent creates these specific data
structures to interrelate various XML documents in a
particular way to ensure compatibility of otherwise in-
compatible documents. IV maintains that these struc-
tures provide a concrete solution through a component
that detects modifications to the dynamic document and
in response thereto, propagates those changes back to the
underlying XML document. We disagree.
Although these data structures add a degree of par-
ticularity to the claims, the underlying concept embodied
by the limitations merely encompasses the abstract idea
itself of organizing, displaying, and manipulating data of
particular documents. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (“[A]ny novelty in
implementation of the idea is a factor to be considered
only in the second step of the Alice analysis.”). The PRTs
and MRTs are, at bottom, broadly defined labels for
generic data types that transfer data from one type of
electronic document to another—here, the so-called dy-
namic document. The resulting dynamic document, in
turn, is nothing more than an interface for displaying and
organizing this underlying data. These features, there-
fore, do not alter our conclusion that the claimed inven-
tion is directed to the abstract concept of collecting,
displaying, and manipulating data of particular docu-
INTELLECTUAL VENTURES I LLC V. CAPITAL ONE 15
ments. Having concluded that the invention is drawn to
an abstract idea, we move to step two.
2
In applying step two of the Alice analysis, we “deter-
mine whether the claims do significantly more than
simply describe [the] abstract method” and thus trans-
form the abstract idea into patentable subject matter.
Ultramercial, 772 F.3d at 715. We look to see whether
there are any “additional features” in the claims that
constitute an “inventive concept,” thereby rendering the
claims eligible for patenting even if they are directed to
an abstract idea. Alice, 134 S. Ct. at 2357. Those “addi-
tional features” must be more than “well-understood,
routine, conventional activity.” Mayo, 132 S. Ct. at 1298.
With regard to the claims at issue, we perceive no “in-
ventive concept” that transforms the abstract idea of
collecting, displaying, and manipulating XML data into a
patent-eligible application of that abstract idea. Rather,
the claims recite both a generic computer element—a
processor—and a series of generic computer “components”
that merely restate their individual functions—i.e., organ-
izing, mapping, identifying, defining, detecting, and
modifying. That is to say, they merely describe the func-
tions of the abstract idea itself, without particularity.
This is simply not enough under step two. See Ultramer-
cial, 772 F.3d at 715–16 (holding the claims insufficient to
supply an inventive concept because they did not “do
significantly more than simply describe [the] abstract
method,” but rather are simply “conventional steps,
specified at a high level of generality”) (quoting Alice, 134
S. Ct. at 2357).
IV argues that the ’081 patent claims, however, un-
conventionally improve a technological process. The
claims, according to IV, specify how to manage and modify
XML documents of varying formats and syntax in a way
that departed from convention. It argues that the patent
16 INTELLECTUAL VENTURES I LLC V. CAPITAL ONE
accomplishes this by creating a “dynamic document”
based upon the MRTs and PRTs, so the system can modi-
fy multiple sets of XML data components at once through
a user interface. We conclude, however, that these data
structures do not sufficiently transform the abstract
concept into a patentable invention under step two. In
particular, the MRTs and PRTs—although technical
sounding—include generic data types for which the sys-
tem can store the extracted data. See ’081 patent col. 2
ll. 4–9 (“A PRT is similar to a relational database table;
they contain most of the data. An MRT includes a group-
ing of PRTs; they contain pointers to individual PRT
records and some calculated data.”). Indeed, as the dis-
trict court observed, IV set forth particular definitions for
these terms that describe them as generic data structures.
See J.A. 29–30 (defining a PRT as “a data type that de-
fines a data structure to contain data extracted from XML
documents” and MRT as “a data type that defines a
collection of primary records types”). The mere fact that
the inventor applied coined labels to conventional struc-
tures does not make the underlying concept inventive.
See, e.g., Alice, 134 S. Ct. at 2352 n.2, 2360 (finding the
claims abstract despite the recitation of technical-
sounding names such as “shadow credit record[s]” and
“shadow debit record[s]”). And the recited dynamic docu-
ment provides little more than an unspecified set of rules
for displaying and organizing MRTs in a user interface
akin to the generic interfaces we have elsewhere ex-
plained impart no inventive concept. See, e.g., Intellectual
Ventures I, 792 F.3d at 1370 (finding that the recited
“interactive interface” was not a “specific application of
the abstract idea that provides an inventive concept”);
Affinity, 838 F.3d at 1262 (characterizing a “graphical
user interface” as a “generic feature” of the invention).
IV next submits that the specific combination of
PRTs, MRTs, and a dynamic document overcomes the
previous problem of the “incompatibility of XML docu-
INTELLECTUAL VENTURES I LLC V. CAPITAL ONE 17
ments with different ‘XML syntax[es]’ and different ‘XML
formats, relational database schemes, and messages
formats.’” Appellants’ Br. 40 (citing J.A. 168, 1388). In
particular, IV argues that the claims set forth a unique
solution to a problem with contemporary XML documents.
Id. at 45. But the claims do not recite particular features
to yield these advantages. Although the claims purport to
modify the underlying XML document in response to
modifications made in the dynamic document, this merely
reiterates the patent’s stated goal itself. Nothing in the
claims indicate what steps are undertaken to overcome
the stated incompatibility problems with XML documents
to propagate those modifications into the XML document.
Indeed, the claim language here provides only a result-
oriented solution, with insufficient detail for how a com-
puter accomplishes it. Our law demands more. See Elec.
Power Grp., 830 F.3d at 1356 (cautioning against claims
“so result focused, so functional, as to effectively cover any
solution to an identified problem”).
In sum, evaluating these claimed elements either in-
dividually or as an ordered combination, we conclude that
they recite no more than routine steps of data collection
and organization using generic computer components and
conventional computer data processing activities. Alt-
hough this patent purports to have met a need in the art
to “allow[] the user to view and update XML documents in
different formats, and . . . manipulate the data and per-
form actions without programming skills,” the claims
recite nothing inventive or transformative to achieve this
stated goal. ’081 patent col. 1 ll. 45–48. Thus, taken
individually or in combination, the recited limitations
neither improve the functions of the computer itself, nor
provide specific programming, tailored software, or mean-
ingful guidance for implementing the abstract concept.
Alice, 134 S. Ct at 2359. Accordingly, they do not mean-
ingfully limit the claims to provide the requisite inventive
concept under step two.
18 INTELLECTUAL VENTURES I LLC V. CAPITAL ONE
We conclude, therefore, that the asserted claims of the
’081 patent do not meet the standard for eligibility under
§ 101 and affirm the district court’s entry of summary
judgment.
THE ’002 PATENT
Turning to the ’002 patent, IV appeals the district
court’s finding on summary judgment of ineligible subject
matter under § 101. We provided a separate analysis of
this patent in our opinion in the companion appeal. See
Intellectual Ventures I LLC v. Erie Indemnity Co., Nos.
2015-1128, -1129, -1132, slip op. at 22–27 (Fed. Cir.
March 7, 2017) (affirming the district court’s dismissal
under Rule 12 for reciting patent-ineligible subject mat-
ter). Because nothing in the record before us here leads
us to conclude otherwise, we affirm the district court’s
entry of summary judgment of ineligibility of the asserted
claims on the basis of our findings and conclusions in our
opinion for that appeal.
CONCLUSION
For the foregoing reasons, we affirm the district court.
AFFIRMED