Intellectual Ventures I LLC v. Symantec Corp. , 838 F.3d 1307 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
INTELLECTUAL VENTURES I LLC,
Plaintiff-Appellant
v.
SYMANTEC CORP.,
Defendant-Cross-Appellant
TREND MICRO INCORPORATED, TREND MICRO,
INC. (USA),
Defendants-Appellees
______________________
2015-1769, 2015-1770, 2015-1771
______________________
Appeals from the United States District Court for the
District of Delaware in Nos. 1:10-cv-01067-LPS, 1:12-cv-
01581-LPS, Chief Judge Leonard P. Stark.
______________________
Decided: September 30, 2016
______________________
ERIC F. CITRON, Goldstein & Russell, P.C., Bethesda,
MD, argued for plaintiff-appellant. Also represented by
THOMAS GOLDSTEIN; BROOKE ASHLEY MAY TAYLOR,
PARKER C. FOLSE III, Susman Godfrey L.L.P., Seattle,
WA; RICHARD W. HESS, JOHN PIERRE LAHAD, Houston, TX.
DOUGLAS ETHAN LUMISH, Latham & Watkins LLP,
Menlo Park, CA, argued for defendant-cross appellant.
2 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
Also represented by JEFFREY G. HOMRIG; DEAN G.
DUNLAVEY, Costa Mesa, CA; GABRIEL BELL, ROBERT J.
GAJARSA, Washington, DC.
YAR ROMAN CHAIKOVSKY, Paul Hastings LLP, Palo Al-
to, CA, argued for defendants-appellees. Also represented
by DARYL STUART BARTOW, BRYAN KEITH JAMES; BLAIR
MARTIN JACOBS, Washington, DC.
JAY P. KESAN, University of Illinois, College of Law,
Champaign, IL, for amici curiae Jay P. Kesan, Shubha
Ghosh, Richard Gruner, Carol M. Hayes, Adam Mossoff,
Kristen Osenga, Michael Risch, Mark F. Schultz, Ted
Sichelman.
______________________
Before DYK, MAYER, and STOLL, Circuit Judges.
Opinion for the court filed by Circuit Judge DYK.
Concurring opinion filed by Circuit Judge MAYER.
Opinion dissenting-in-part filed by Circuit Judge STOLL.
DYK, Circuit Judge.
Intellectual Ventures I LLC (“IV”) sued Symantec
Corp. and Trend Micro 1 (together, “appellees” or “defend-
ants”) for infringement of various claims of U.S. Patent
Nos. 6,460,050 (“the ’050 patent”), 6,073,142 (“the ’142
patent”), and 5,987,610 (“the ’610 patent”). The district
court held the asserted claims of the ’050 patent and the
’142 patent to be ineligible under § 101, and the asserted
claim of the ’610 patent to be eligible. We affirm as to the
1 We refer to Trend Micro Incorporated and Trend
Micro, Inc. (USA) together as a singular defendant “Trend
Micro.”
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 3
asserted claims of the ’050 patent and ’142 patent, and
reverse as to the asserted claim of the ’610 patent.
BACKGROUND
I
IV owns the three patents at issue: the ’050 patent,
the ’142 patent, and the ’610 patent. IV sued Symantec
and Trend Micro, two developers of anti-malware and
anti-spam software, for infringement of various claims of
those patents. Against Symantec, IV asserted claims 9,
16, and 22 of the ’050 patent; claims 1, 7, 21, and 22 of the
’142 patent; and claim 7 of the ’610 patent. Against Trend
Micro, IV asserted claims 9, 13, 16, 22, and 24 of the ’050
patent; and claims 1, 7, 17, 21, 22, 24, and 26 of the ’142
patent.
With respect to the two defendants, a § 101 patent el-
igibility issue arose at different stages of the proceedings.
The case against Symantec went to trial. The jury found
that Symantec had not proven by clear and convincing
evidence that any asserted claims were invalid under
§§ 102 and 103. The jury found Symantec had infringed
the asserted claims of the ’142 patent and ’610 patent,
and had not infringed any asserted claims of the ’050
patent. 2 After trial, Symantec brought a motion under
Fed. R. Civ. P. 52(c) for a judgment that all the asserted
claims of the three patents-in-suit are unpatentable under
35 U.S.C. § 101, an issue not addressed in the jury ver-
dict.
The case against Trend Micro did not go to trial.
Trend Micro brought a motion for summary judgment of
2 The jury awarded $9 million for infringement of
the ’142 patent and $8 million for infringement of the ’610
patent.
4 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
invalidity under § 101 for all of the asserted claims. 3 After
Trend Motion had submitted its motion, IV withdrew its
assertion of claim 7 of the ’610 patent against Trend
Micro, the only claim of the ’610 patent asserted against
Trend Micro. Thus the motions raised issues of patent
eligibility as to the ’050 and ’142 patents with respect to
both defendants, and as to the ’610 patent only with
respect to Symantec.
II
The ’050 patent is entitled, “Distributed Content Iden-
tification System.” The patent application was filed on
December 22, 1999, and the ’050 patent issued on October
1, 2002. The patent is directed to methods of screening
emails and other data files for unwanted content.
The ’142 patent is entitled, “Automated Post Office
Based Rule Analysis of E-Mail Messages and Other Data
Objects for Controlled Distribution in Network Environ-
ments.” The patent application was filed on June 23,
1997, and the ’142 patent issued on June 6, 2000. The
patent is directed to methods of routing e-mail messages
based on specified criteria (i.e., rules).
The ’610 patent is entitled, “Computer Virus Screen-
ing Methods and Systems.” The patent application was
filed on February 12, 1998, and the patent issued on
November 16, 1999. The patent is directed to using com-
puter virus screening in the telephone network.
In both cases the district court determined that the
asserted claims of the ’050 patent and ’142 patent claimed
3 While Trend Motion did not state under which
rule it brought its motion, the district court applied the
Fed. R. Civ. P. 56 summary judgment standard, and the
parties did not dispute the application of that standard.
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 5
ineligible subject matter under 35 U.S.C. § 101, and
granted appellees’ motions with respect to those patents.
The district court held, however, that Symantec had failed
to establish that the asserted claim of the ’610 patent is
patent-ineligible under § 101, and denied Symantec’s
motion with respect to that patent.
Final judgment was entered in favor of Symantec and
Trend Micro that the asserted claims of the ’050 and ’142
patents are patent-ineligible under 35 U.S.C. § 101. Id.
See Final Judgment Following Jury Trial (“Symantec
Final Judgment”), Intellectual Ventures I LLC v. Syman-
tec Corp., No. 10-cv-1067-LPS (D. Del. March 24, 2016),
ECF No. 770 at 2; 4 Judgment, Intellectual Ventures I LLC
v. Trend Micro Inc., No. 12-cv-1581-LPS (D. Del. June 17,
2015), ECF No. 234 at 2. This resolved all claims against
Trend Micro. With respect to Symantec, the district court
entered final judgment in favor of IV that Symantec
infringed claim 7 of the ’610 patent with damages in the
amount of $8 million, and that claim 7 was also not
proved invalid by Symantec under 35 U.S.C. §§ 102 or
103, or patent-ineligible under § 101. See Symantec Final
Judgment at 2.
IV now appeals the district court’s ineligibility deter-
minations with respect to the ’050 patent and ’142 patent
as to Symantec and Trend Micro, and Symantec cross-
appeals the determination of eligibility for the ’610 pa-
tent. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
4 The entry of final judgment ripened Symantec’s
cross-appeal. See Pause Tech. LLC v. TiVo Inc., 401 F.3d
1290, 1295 (Fed. Cir. 2005).
6 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
DISCUSSION
I
We review the grant or denial of summary judgment
de novo. See Nicini v. Morra, 212 F.3d 798, 805 (3d Cir.
2000) (en banc). For the district court’s entry of judgment
under Rule 52(c), we review the district court’s factual
findings for clear error and its legal conclusions de novo.
See EBC, Inc. v. Clark Bldg. Sys., Inc., 618 F.3d 253, 273
(3d Cir. 2010). Patent eligibility under § 101 is an issue of
law which we review de novo. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015).
II
Section 101 of title 35 defines patent-eligible subject
matter. It provides, “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or compo-
sition of matter, or any new and useful improvement
thereof, may obtain a patent therefor . . . .” 35 U.S.C.
§ 101. For over 150 years, the Supreme Court has recog-
nized an implicit exception to these broad categories
encompassing “[l]aws of nature, natural phenomena, and
abstract ideas[, which] are not patentable.” Mayo Collabo-
rative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289,
1293 (2012) (citation and internal quotation marks omit-
ted); see also Bilski v. Kappos, 561 U.S. 593, 601–02
(2010).
In Mayo and in Alice, the Court set forth a framework
for “distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
(2014). At Mayo/Alice step one, a court must “determine
whether the claims at issue are directed to one of those
patent-ineligible concepts.” Id. The category of abstract
ideas embraces “fundamental economic practice[s] long
prevalent in our system of commerce,” id. at 2356 (quot-
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 7
ing Bilski, 561 U.S. at 611), including “longstanding
commercial practice[s]” and “method[s] of organizing
human activity,” id. But the category of abstract ideas is
not limited to economic or commercial practices or meth-
ods of organizing human activity. See infra note 5.
If a claim is directed to a patent-ineligible concept, the
court must proceed to Mayo/Alice step two, and ask,
“what else is there in the claims before us?” Alice, 134 S.
Ct. at 2355 (citation and internal quotation citation
omitted). Step two is “a search for an inventive concept—
i.e., an element or combination of elements that is suffi-
cient to ensure that the patent in practice amounts to
significantly more than a patent upon the ineligible
concept itself.” Id. (citation and internal quotation marks
omitted).
At Mayo/Alice step two, the search is for “an in-
ventive concept sufficient to transform the claimed ab-
stract idea into a patent-eligible application.” Id. at 2357
(citation and internal quotation marks omitted). And
“[s]imply appending conventional steps, specified at a
high level of generality,” which are “well known in the
art” and consist of “well-understood, routine, conventional
activit[ies]” previously engaged in by workers in the field,
is not sufficient to supply the inventive concept. Id. at
2357, 2359 (citations and internal quotation marks omit-
ted).
1. THE ’050 PATENT
The district court held patent-ineligible the asserted
claims of the ’050 patent—claims 9, 13, 16, 22, and 24—
directed to filtering e-mails that have unwanted content.
We agree with the district court. The parties agree that
independent claim 9 is representative. It recites:
9. A method for identifying characteristics of data
files, comprising:
8 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
receiving, on a processing system, file content
identifiers for data files from a plurality of file
content identifier generator agents, each agent
provided on a source system and creating file con-
tent IDs using a mathematical algorithm, via a
network;
determining, on the processing system, whether
each received content identifier matches a charac-
teristic of other identifiers; and
outputting, to at least one of the source systems
responsive to a request from said source system,
an indication of the characteristic of the data file
based on said step of determining.
’050 patent, col. 8, ll. 13–26. According to IV, this method
of filtering emails is used to address the problems of spam
e-mail and the use of e-mail to deliver computer viruses.
We agree with the district court that receiving e-mail
(and other data file) identifiers, characterizing e-mail
based on the identifiers, and communicating the charac-
terization—in other words, filtering files/e-mail—is an
abstract idea.
The Supreme Court has held that “fundamental . . .
practice[s] long prevalent” are abstract ideas. Alice, 134 S.
Ct. at 2356. The Supreme Court and we have held that a
wide variety of well-known and other activities constitute
abstract ideas. 5
5 See, e.g., Bilski, 561 U.S. at 611 (claims directed to
risk hedging); Alice, 134 S. Ct. at 2356 (claims directed to
idea of intermediated settlement); In re TLI Commc’ns
LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)
(claims directed to classifying a digital image and storing
the image based on its classification); Mortg. Grader, Inc.
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 9
v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed.
Cir. 2016) (claims drawn to well-known idea of anony-
mous loan shopping); Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015) (claims directed
to idea of determining a price using organizational and
product group hierarchies); Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)
(claims directed to idea of retaining information in the
navigation of online forms); OIP Techs., 788 F.3d at 1362–
63 (claims directed to offer-based price optimization);
Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(claims directed to the idea of collecting data, recognizing
certain data within the collected data set, and storing that
recognized data in a memory); Ultramercial, Inc. v. Hulu
LLC, 772 F.3d 709, 714–15 (Fed. Cir. 2014) (claims di-
rected to displaying an advertisement in exchange for
access to copyrighted media); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claim directed
toward guaranteeing a party’s performance in a transac-
tion); Accenture Global Servs., GmbH v. Guidewire Soft-
ware, Inc., 728 F.3d 1336, 1342 (Fed. Cir. 2013) (claims
directed to automated methods for generating task
lists); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012) (claims directed to processing information
through a clearinghouse); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (claims directed to a method for verifying the validi-
ty of a credit card transaction). See also McRO, Inc. v.
Bandai Namco Games Am. Inc., No. 2015-1080, 2016 WL
4896481, at *8–10 (claims “focused on a specific asserted
improvement in computer animation, i.e., the automatic
use of rules of a particular type” held not to be directed to
ineligible subject matter).
10 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
Here, it was long-prevalent practice for people receiv-
ing paper mail to look at an envelope and discard certain
letters, without opening them, from sources from which
they did not wish to receive mail based on characteristics
of the mail. 6 The list of relevant characteristics could be
kept in a person’s head. Characterizing e-mail based on a
known list of identifiers is no less abstract. The patent
merely applies a well-known idea using generic computers
“to the particular technological environment of the Inter-
net.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1259 (Fed. Cir. 2014).
The asserted claims of the ’050 patent also resemble
claims we have held were directed to an abstract idea.
Recently, in BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, we held that a claim to a “content
filtering system for filtering content retrieved from an
Internet computer network[, e.g., to prevent users from
accessing certain websites] . . . is [directed to] an abstract
idea.” 827 F.3d 1341, 1348 (Fed. Cir. 2016). 7 And in
Content Extraction, 776 F.3d at 1347, cert. denied, 136 S.
Ct. 119 (2015), we found that the asserted patents were
“drawn to the abstract idea of 1) collecting data, 2) recog-
6 For example, it is common for “an occupant who
receives generically addressed mail [to] discard it as junk
mail.” Jones v. Flowers, 547 U.S. 220, 248 (2006) (Thom-
as, J., dissenting).
7 In BASCOM, we found the claims patent-eligible
because, at step two, the patent claimed “a technology-
based solution (not an abstract-idea-based solution im-
plemented with generic technical components in a conven-
tional way) to filter content on the Internet that
overcomes existing problems with other Internet filtering
systems.” 827 F.3d at 1351.
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 11
nizing certain data within the collected data set, and 3)
storing that recognized data in a memory.”
Because we hold the asserted claims of the ’050 patent
are directed to an abstract idea, we proceed to Mayo/Alice
step two to determine whether the claims contain an
“inventive concept” that renders them patent-eligible.
Claims that “amount to nothing significantly more than
an instruction to apply [an] abstract idea . . . using some
unspecified, generic computer” and in which “each step
does no more than require a generic computer to perform
generic computer functions” do not make an abstract idea
patent-eligible, Alice, 134 S. Ct. at 2359–60 (citations and
internal quotation marks omitted), because “claiming the
improved speed or efficiency inherent with applying the
abstract idea on a computer” does not “provide a sufficient
inventive concept.” Intellectual Ventures I LLC v. Capital
One Bank (USA) (“Intellectual Ventures v. Capital One
Bank”), 792 F.3d 1363, 1367 (Fed. Cir. 2015).
IV argues that the jury verdict determined that Sy-
mantec’s proffered prior art did not anticipate or render
obvious the asserted claims of the ’050 patent, and that
the jury’s anticipation and obviousness determination is
inconsistent with a determination that the claims are
patent-ineligible. While the claims may not have been
anticipated or obvious because the prior art did not dis-
close “determining . . . whether each received content
identifier matches a characteristic” or “outputting . . . an
indication of the characteristic of the data file,” that does
not suggest that the idea of “determining” and “output-
ting” is not abstract, much less that its implementation is
not routine and conventional.
Indeed, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject
matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981)
12 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
(emphasis added); see also Mayo, 132 S. Ct. at 1303–04
(rejecting “the Government’s invitation to substitute
§§ 102, 103, and 112 inquiries for the better established
inquiry under § 101”). 8 Here, the jury’s general finding
that Symantec did not prove by clear and convincing
evidence that three particular prior art references do not
disclose all the limitations of or render obvious the assert-
ed claims does not resolve the question of whether the
claims embody an inventive concept at the second step of
Mayo/Alice.
The steps of the asserted claims of the ’050 patent do
not “improve the functioning of the computer itself,” Alice,
134 S. Ct. at 2359, for example by disclosing an “im-
proved, particularized method of digital data compres-
sion,” DDR Holdings, 773 F.3d at 1259, or by improving
“the way a computer stores and retrieves data in
memory,” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1339 (Fed. Cir. 2016). Rather, these claims use generic
computers to perform generic computer functions.
In Intellectual Ventures v. Capital One Bank, we
found abstract an Internet-based method for “tracking
financial transactions to determine whether they exceed a
pre-set spending limit (i.e., budgeting).” 792 F.3d at 1367.
The fact that “the claims recite[d] budgeting using a
‘communication medium’ (broadly including the Internet
and telephone networks), . . . [did] not render the claims
any less abstract.” Id. We also found abstract claims
8 See also Parker v. Flook, 437 U.S. 584, 588 (1978)
(“This case turns entirely on the proper construction of
§ 101 . . . . It does not involve the familiar issues of novel-
ty and obviousness that routinely arise under §§ 102 and
103 when the validity of a patent is challenged. For the
purpose of our analysis, we assume that respondent’s
formula is novel and useful and that he discovered it.”).
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 13
related to “customizing [website] information based on (1)
information known about the user and (2) navigation
data,” and similarly held that “a generic web server with
attendant software . . . ‘tasked with tailoring information
and providing it to the user’ provides no additional limita-
tion beyond applying an abstract idea, restricted to the
Internet, on a generic computer.” Id. at 1370–71.
The claims here are also distinguishable from those in
BASCOM, which allegedly improved an existing techno-
logical process by describing “how [a] particular arrange-
ment of elements is a technical improvement over prior
art ways of filtering [Internet] content,” i.e., “a filter
implementation versatile enough that it could be adapted
to many different users’ preferences while also installed
remotely in a single location.” 827 F.3d at 1350. There is
not, in the ’050 patent, any “specific or limiting recitation
of . . . improved computer technology,” CLS Bank Int’l v.
Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013)
(en banc) (Lourie, J., concurring), as the asserted claims
describe only generic computer elements.
Finally, IV argues that the ’050 patent “shrink[s] the
protection gap and moot[s] the volume problem.” IV’s
Opening Br. at 14. According to IV, the protection gap is
“the period of time between identification of a computer
virus by an anti-malware provider and distribution of that
knowledge to its users.” Id. at 10. The volume problem is
the “exponential growth in malware and spam,” increas-
ing the amount of antivirus signatures to be downloaded.
Id. at 12–13. However, the asserted claims do not contain
any limitations that address the protection gap or volume
problem, e.g., by requiring automatic updates to the
antivirus or antispam software or the ability to deal with
a large volume of such software. We have explained that,
“for a perceived abstract idea, if the claim ‘contains an
“inventive concept” sufficient to “transform” the claimed
abstract idea into a patent-eligible application,’ then the
claims pass the test of eligibility under section 101.”
14 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
Internet Patents Corp., 790 F.3d at 1347 (emphasis added)
(quoting Alice, 134 S. Ct. at 2357). But when a claim
directed to an abstract idea “contains no restriction on
how the result is accomplished . . . [and] [t]he mechanism
. . . is not described, although this is stated to be the
essential innovation[,]” id. at 1348, then the claim is not
patent-eligible.
The asserted claims of the ’050 patent are not patent-
eligible under § 101.
2. THE ’142 PATENT
The district court held ineligible claims 1, 7, 17, 22,
24, and 26 of the ’142 patent, which relate to systems and
methods for receiving, screening, and distributing e-mail,
and we agree. According to IV, claim 1 is representative of
how the ’142 patent screens e-mail, 9 and recites:
1. A post office for receiving and redistributing e-
mail messages on a computer network, the post
office comprising:
a receipt mechanism that receives an e-mail mes-
sage from a sender, the e-mail message having at
least one specified recipient;
9 Defendants agree, and IV does not dispute, that
“[a]ll of the claims are substantially similar and no party
claims that they differ in any manner relevant” to the
§ 101 analysis. Opening Br. of Cross-Appellant Symantec
Corp. at 10. We focus on claim 1 of the ’142 patent, which
IV states is representative. Addressing each of the assert-
ed claims is unnecessary when “all the claims are sub-
stantially similar and linked to the same abstract idea.”
Content Extraction, 776 F.3d at 1348 (internal quotation
marks and citation omitted).
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 15
a database of business rules, each business rule
specifying an action for controlling the delivery of
an e-mail message as a function of an attribute of
the e-mail message;
a rule engine coupled to receive an e-mail message
from the receipt mechanism and coupled to the
database to selectively apply the business rules to
the e-mail message to determine from selected
ones of the business rules a set of actions to be
applied to the e-mail message; and
a distribution mechanism coupled to receive the
set of actions from the rule engine and apply at
least one action thereof to the e-mail message to
control delivery of the e-mail message and which
in response to the rule engine applying an action
of deferring delivery of the e-mail message, the
distribution engine automatically combines the e-
mail message with a new distribution list specify-
ing at least one destination post office for receiv-
ing the e-mail message for review by an
administrator associated with the destination post
office, and a rule history specifying the business
rules that were determined to be applicable to the
e-mail message by at least one rule engine, and
automatically delivers the e-mail message to a
first destination post office on the distribution list
instead of a specified recipient of the e-mail mes-
sage.
’142 patent, col. 27, ll. 2–32.
The written description is particularly useful in de-
termining what is well-known or conventional. See, e.g.,
Internet Patents Corp., 790 F.3d at 1348. The ’142 patent’s
abstract describes the invention as “[a] system, method
and various software products . . . for automatic deferral
and review of e-mail messages and other data objects in a
networked computer system, by applying business rules
16 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
to the messages as they are processed by post offices.”
’142 patent, Abstract. Claim 1 also describes the patented
system as a “post office”—albeit an electronic one. ’142
patent, col. 27, ll. 2. The district court held that “the
asserted claims of the ’142 patent are directed to human-
practicable concepts, which could be implemented in, for
example, a brick-and-mortar post office.” J.A. 35.
We agree, and think the district court’s analogy to a
corporate mailroom is also useful. Such mailrooms receive
correspondence, keep business rules defining actions to be
taken regarding correspondence based on attributes of the
correspondence, apply those business rules to correspond-
ence, and take certain actions based on the application of
business rules. Those actions include gating the message
for further review, 10 as in claim 1, and also releasing,
deleting, returning, or forwarding the message, as de-
scribed elsewhere in the ’142 patent, see, e.g., col. 3, ll. 30–
39.
Indeed, in recounting the background of the inven-
tion, the patent states,
[m]any corporate organizations have elaborate
methods to control the flow of memorandum, pub-
lications, notices, and other printed information
within the organization. An organization may lim-
it the types of documents employees can distribute
at work, and in some cases, control which persons
within an organization communicate with each
other. . . . These various rules are typically docu-
10 The specification states, “[f]or example, a business
rule to gate an e-mail for further review may be triggered
for any e-mail message that is addressed to the president
of the company.” ’142 patent, col. 3, 45–48.
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 17
mented as part of the organization’s business
communication policies.
Id. at col. 1, ll. 15–33. Thus, the ’142 patent itself demon-
strates that the claimed systems and methods of screen-
ing messages are abstract ideas, “fundamental . . .
practice[s] long prevalent in our system” and “method[s]
of organizing human activity.” Alice, 134 S. Ct. at 2356
(citations and internal quotation marks omitted); see also
Intellectual Ventures v. Capital One Bank, 792 F.3d at
1369.
And IV itself informed the district court, in its tech-
nology tutorial, “[i]n the typical environment, the post
office resides on a mail server, where the company’s
emails are received, processed, and routed to recipients.
Conceptually, this post office is not much different than a
United States Postal Service office that processes letters
and packages, except that the process is all computer-
implemented and done electronically in a matter of sec-
onds.” J.A. 40.
This demonstrates that the concept is well-known and
abstract. Furthermore, with the exception of generic
computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being per-
formed by a human, mentally or with pen and paper. See
CyberSource, 654 F.3d at 1371–72. Indeed, the specifica-
tion expressly states that one type of post office, the
gatekeeping post office, which “provides for administra-
tive review and processing of gated messages . . . provides
for both manual review by a gatekeeper—a person desig-
nated to review gated messages—and automatic review
and processing.” ’142 patent, col. 7, ll. 31–35; see also id.
at col. 11, ll. 7–10. The ’142 patent is directed to a conven-
tional business practice—the screening of messages by
corporate organizations—in the context of electronic
communications.
18 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
Since the claims are directed to an abstract idea, we
proceed to Mayo/Alice step two. According to the specifi-
cation, the claims can “operate[] on a conventional com-
munications network.” Id. at col. 5, l. 46. The post offices
are “[c]ommunicatively coupled to the network through
conventional e-mail protocols,” and “conventional mail
servers and conventional post office/mail server combina-
tions may be present.” Id. at col. 5, ll. 48–49, 55–57. The
patent discloses only generic computers performing gener-
ic functions: “[t]he [Rule Enforcing Post Offices] and
[Gatekeeping Post Offices] are preferably implemented as
software products executing on conventional server-class
computers, such as . . . IBM compatible computers based
on Intel Inc.’s Pentium™ processors. The servers operate
in conjunction with conventional operating systems, such
as UNIX™, or Microsoft Corp.’s Windows95™ or Win-
dowNT™.” Id. at col. 9, ll. 51–58. The specification thus
confirms that the implementation of the abstract idea is
routine and conventional. The ’142 patent does not “im-
prove the functioning of the computer itself.” Alice, 134 S.
Ct. at 2359 (citation omitted). Nor does it solve a “chal-
lenge particular to the Internet.” DDR Holdings, 773 F.3d
at 1257.
IV argues that the claims do not merely require rou-
tine and conventional use of computers and the Internet
because “applying business rules to email is not what
computers and the Internet do in the absence of this claim
limitation” and “because computers and the Internet do
not have ‘rule engines’ as a matter of course.” IV’s Open-
ing Br. at 54. But the inquiry is not whether conventional
computers already apply, for example, well-known busi-
ness concepts like hedging or intermediated settlement.
Rather, we determine whether “each step does no more
than require a generic computer to perform generic com-
puter functions.” Alice, 134 S. Ct. at 2359 (emphasis
added). Here that is the case.
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 19
The asserted claims of the ’142 patent are not patent-
eligible under § 101.
3. THE ’610 PATENT
Claim 7 is the only asserted claim of the ’610 patent.
The district court held eligible claim 7 of the ’610 patent.
Claim 7 depends from claim 1, which provides:
1. A virus screening method comprising the steps
of:
routing a call between a calling party and a called
party of a telephone network;
receiving, within the telephone network, computer
data from a first party selected from the group
consisting of the calling party and the called par-
ty;
detecting, within the telephone network, a virus
in the computer data; and
in response to detecting the virus, inhibiting
communication of at least a portion of the com-
puter data from the telephone network to a second
party selected from the group consisting of the
calling party and the called party.
’610 patent, col. 14, ll. 34–47. Claim 7 recites:
7. The virus screening method of claim 1 further
comprising the step of determining that virus
screening is to be applied to the call based upon at
least one of an identification code of the calling
party and an identification code of the called par-
ty.
Id. at col. 14, l. 66–col. 15 l. 3.
Unlike the asserted claims of the ’050 and ’142 pa-
tents, claim 7 involves an idea that originated in the
computer era—computer virus screening. But the idea of
20 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
virus screening was nonetheless well known when the
’610 patent was filed. Performing virus screening was a
long prevalent practice in the field of computers, and, as
the patent admits, performed by many computer users.
The patent acknowledges that, prior to the invention,
“[m]any computer users [had] virus screening and detec-
tion software installed on their computers.” Id. at col. 1, ll.
10–11. Claim 7 of the ’610 patent, however, does not claim
a new method of virus screening or improvements there-
to—in fact, it requires only “detecting . . . a virus in the
computer data.” Id. at col. 14, ll. 40–41. The specification
recites conventional “virus screening software.” See, e.g.,
’610 patent, col. 3, ll. 35–39. By itself, virus screening is
well-known and constitutes an abstract idea.
At step two of Mayo/Alice, there is no other aspect of
the claim that is anything but conventional.
The ’610 patent is directed to the use of well-known
virus screening software within the telephone network 11
or the Internet. We have previously determined that
performing otherwise abstract activity on the Internet
does not save the idea from being patent-ineligible. As we
said in Intellectual Ventures v. Capitol One Bank, “[a]n
abstract idea does not become nonabstract by limiting the
invention to a particular . . . technological environment,
such as the Internet. . . . [W]hile the claims recite budget-
ing using a ‘communication medium’ (broadly including
the Internet and telephone networks), that limitation
does not render the claims any less abstract.” 792 F.3d at
1366–67. See also Ultramercial, 772 F.3d at 716 (Fed. Cir.
11 The district court construed “within the telephone
network” to mean “in the voice or data network connect-
ing the calling party and called party, exclusive of the
networks and gateway nodes of the called party and
calling party.” J.A. 276.
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 21
2014) (“The claims’ invocation of the Internet also adds no
inventive concept. As we have held, the use of the Inter-
net is not sufficient to save otherwise abstract claims from
ineligibility under § 101.”). 12
Just as performance of an abstract idea on the Inter-
net is abstract, so too the performance of an abstract
concept in the environment of the telephone network is
abstract, as Intellectual Ventures v. Capitol One Bank
recognized. Our recent decision in TLI Communications
involved a similar situation. There, we held that a chal-
lenged claim was “drawn to the concept of classifying an
image and storing the image based on its classification.”
823 F.3d at 611. This was abstract because “[w]hile the
[asserted claim] requires concrete, tangible components
such as ‘a telephone unit’ and a ‘server,’ the specification
makes clear that the recited physical components merely
provide a generic environment in which to carry out the
abstract idea of classifying and storing digital images in
an organized manner.” Id. Here, the recitation of a “tele-
phone network,” like the telephone unit and server in TLI
Communications, merely provides a “generic environ-
ment” in which to carry out the well-known and abstract
idea of virus screening.
Nor does the asserted claim improve or change the
way a computer functions. Claim 7 recites no more than
generic computers that use generic virus screening tech-
nology. But the “mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 134 S. Ct. at 2358. “For
12 See also, e.g., buySAFE, 765 F.3d at 1355 (“The
computers in Alice were receiving and sending infor-
mation over networks connecting the intermediary to the
other institutions involved, and the Court found the
claimed role of the computers insufficient.”).
22 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
the role of a computer in a computer-implemented inven-
tion to be deemed meaningful in the context of this analy-
sis, it must involve more than performance of ‘well-
understood, routine, [and] conventional activities previ-
ously known to the industry.’” Content Extraction, 776
F.3d at 1347–48 (quoting Alice, 134 S. Ct. at 2359).
As the district court determined, claim 7 calls for at
least three computers: the computer of the first party or
sending party, the virus screening computer, and the
computer of the second or receiving party. The sending
and receiving computers can be generic—they perform
only sending and receiving functions. See buySAFE, 765
F.3d at 1352, 1355. The virus screening computer fares no
better. According to the specification, “[v]irus screening
can be facilitated in the telephone network using either a
conventional telephone network processor adapted to run
associated virus screening software or an additional
processor which runs virus screening software. . . . The
processor can augment conventional circuit-switched
network elements . . . .” ’610 patent, col. 3, ll. 35–39, 49–
50 (emphasis added). “As is well known, each of the virus-
screening processors can have one or more associated
modems to modulate computer data for transmission, and
to demodulate received computer data.” Id. at col. 4, ll.
58–61. There is no indication that the virus screening
software installed on a conventional telephone network
processor is any different than the virus screening soft-
ware “[m]any computer users have . . . installed on their
computers.” Id. at col. 1, ll. 10–11. These “generic comput-
er components [are] insufficient to add an inventive
concept to an otherwise abstract idea.” TLI Commc’ns,
823 F.3d at 614.
IV argues that “[t]he claims of the ’610 Patent include
meaningful limitations that narrow the claimed invention
to a specific way of screening for computer viruses within
the telephone network . . . and does not preempt all virus
detection.” IV’s Response and Reply Br. at 55. A narrow
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 23
claim directed to an abstract idea, however, is not neces-
sarily patent-eligible, for “[w]hile preemption may signal
patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., 788 F.3d at
1362–63 (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in
the e-commerce setting do not make them any less ab-
stract.”).
In summary, unlike the claims at issue in Enfish,
which involved a “specific type of data structure designed
to improve the way a computer stores and retrieves data
in memory,” 822 F.3d at 1339, claim 7 of the ’610 patent
does not improve or change the way a computer functions.
Nor does claim 7 overcome a problem unique to the Inter-
net as was the case in DDR Holdings. 773 F.3d at 1258–
59.
Citing BASCOM, the dissent argues that “claim 7
constitutes an improvement of the network itself and,
thus, focuses on improving computers as tools.” Dissent-
ing Op. at 5. Contrary to the dissent, this case is unlike
BASCOM, where, “[o]n [a] limited record” and when
viewed in favor of the patentee, the claims alleged a
“technical improvement over prior art ways of filtering
[Internet] content.” 827 F.3d at 1350. The patent in
BASCOM did not merely move existing content filtering
technology from local computers to the Internet, 13 which
“would not contain an inventive concept,” but
“overc[a]me[] existing problems with other Internet
13 Indeed, in BASCOM, the patent specification
acknowledged that several prior art systems already
performed content filtering at either local or remote
servers. See 827 F.3d at 1344.
24 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
filtering systems”—i.e., it solved the problem of “inflexible
one-size-fits-all” remote filtering schemes (caused by
simply moving filtering technology to the Internet) by
enabling individualized filtering at the ISP server. Id at
1350–51. In other words, the patent in BASCOM did not
purport to improve the Internet itself by introducing prior
art filtering technology to the Internet. Rather, the
BASCOM patent fixed a problem presented by combining
the two. Here the record does not indicate that claim 7
recites any improvement to conventional virus screening
software, nor does claim 7 solve any problem associated
with situating such virus screening on the telephone
network.
The dissent nonetheless urges that there are two ad-
vantages to using virus screening on the telephone net-
work that qualify as inventive concepts: (1) shifting virus
detection away from the networks of the sender and
recipient, which allows users to communicate over a
network without concern of receiving computer viruses;
and (2) closing the “protection gap,” i.e., the problem of
individual computer users having to periodically update
their virus screening software. Dissenting Op. at 2.
Regarding shifting virus detection to the telephone
network, the claimed inventive solution of claim 7 is to
utilize an intermediary computer in forwarding infor-
mation. But that solution is perfectly conventional and is
applied any time an e-mail recipient performs virus
screening and, acting as an intermediary, forwards the e-
mail to another recipient. As discussed above, there is no
claim here describing a particular method of incorporat-
ing virus screening into the Internet. 14 To be sure, it may
14 See Affinity Labs of Tex., LLC v. DirecTV, LLC,
No. 2015-1845 (Fed. Cir. Sept. 23, 2016), slip op. at 16
(holding patent ineligible where it “d[id] not provide an
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 25
be that other claims that recite particular features of
intermediate computers (e.g., modeling to match the
recipient’s computer architecture) incorporate an in-
ventive concept, but those claims are not before us.
As to the protection gap, claim 7 of the ’610 patent
does not describe or require a solution to the protection
gap. See supra at 13–14 (explaining that the language of
the challenged claims of the ’050 patent do not address
the protection gap). The district court erred in relying on
technological details set forth in the patent’s specification
and not set forth in the claims to find an inventive con-
cept. See Accenture, 728 F.3d at 1345 (“[T]he complexity of
the implementing software or the level of detail in the
specification does not transform a claim reciting only an
abstract concept into a patent-eligible system or meth-
od.”); Content Extraction, 776 F.3d at 1346 (“We focus
here on whether the claims of the asserted patents fall
within the excluded category of abstract ideas.”) (empha-
sis added).
As we explained in TLI Communications, the claim
here is “not directed to a specific improvement to comput-
er functionality. Rather, [it is] directed to the use of
conventional or generic technology in a nascent but well-
known environment, without any claim that the invention
reflects an inventive solution to any problem presented by
combining the two.” 823 F.3d at 612
Claim 7 of the ’610 patent is not patent-eligible under
§ 101.
inventive solution to a problem in implementing the idea
of remote delivery of regional broadcasting; it simply
recite[d] that the abstract idea of remote delivery will be
implemented using the conventional components and
functions generic to cellular telephones.”).
26 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
AFFIRMED-IN-PART AND REVERSED-IN-PART
COSTS
Costs to defendants.
United States Court of Appeals
for the Federal Circuit
______________________
INTELLECTUAL VENTURES I LLC,
Plaintiff-Appellant
v.
SYMANTEC CORP.,
Defendant-Cross-Appellant
TREND MICRO INCORPORATED, TREND MICRO,
INC. (USA),
Defendants-Appellees
______________________
2015-1769, 2015-1770, 2015-1771
______________________
Appeals from the United States District Court for the
District of Delaware in Nos. 1:10-cv-01067-LPS, 1:12-cv-
01581-LPS, Chief Judge Leonard P. Stark.
______________________
MAYER, Circuit Judge, concurring.
I agree that all claims on appeal fall outside of 35
U.S.C. § 101. I write separately, however, to make two
points: (1) patents constricting the essential channels of
online communication run afoul of the First Amendment;
and (2) claims directed to software implemented on a
generic computer are categorically not eligible for patent.
2 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
I.
“[T]he Constitution protects the right to receive in-
formation and ideas. . . . This right to receive information
and ideas, regardless of their social worth, is fundamental
to our free society.” Stanley v. Georgia, 394 U.S. 557, 564
(1969) (citations omitted). Patents, which function as
government-sanctioned monopolies, invade core First
Amendment rights when they are allowed to obstruct the
essential channels of scientific, economic, and political
discourse. See United States v. Playboy Entm’t Grp., Inc.,
529 U.S. 803, 812 (2000) (“The distinction between laws
burdening and laws banning speech is but a matter of
degree.”); see also In re Tam, 808 F.3d 1321, 1340 (Fed.
Cir. 2015) (en banc) (explaining that the government may
impermissibly burden speech “even when it does so indi-
rectly”).
Although the claims at issue here disclose no new
technology, they have the potential to disrupt, or even
derail, large swaths of online communication. U.S. Patent
No. 6,460,050 (the “’050 patent”) purports to cover meth-
ods of “identifying characteristics of data files,” ’050
patent, col. 8 l. 13, whereas U.S. Patent No. 6,073,142 (the
“’142 patent”) broadly claims systems and methods which
allow an organization to control internal email distribu-
tion, ’142 patent, col. 1 ll. 15–34. U.S. Patent No.
5,987,610 (the “’610 patent”) describes, in sweeping terms,
screening a communication for viruses or other harmful
content at an intermediary location before delivering it to
an addressee. See ’610 patent, col. 14 ll. 34–47. The
asserted claims speak in vague, functional language,
giving them the elasticity to reach a significant slice of all
email traffic. See Gottschalk v. Benson, 409 U.S. 63, 69
(1972) (“Benson”) (explaining that claims are patent
eligible only if they contain limitations “sufficiently defi-
nite to confine the patent monopoly within rather definite
bounds”). Indeed, the claims of the ’610 patent could
reasonably be read to cover most methods of screening for
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 3
harmful content while data is being transmitted over a
network. See ’610 patent, col. 1 ll. 59–61 (describing
“screen[ing] computer data for viruses within a telephone
network before communicating the computer data to an
end user”).
Suppression of free speech is no less pernicious be-
cause it occurs in the digital, rather than the physical,
realm. “[W]hatever the challenges of applying the Consti-
tution to ever-advancing technology, the basic principles
of freedom of speech and the press, like the First Amend-
ment’s command, do not vary when a new and different
medium for communication appears.” Brown v. Entm’t
Merchs. Ass’n, 564 U.S. 786, 790 (2011) (citations and
internal quotation marks omitted). Essential First
Amendment freedoms are abridged when the Patent and
Trademark Office (“PTO”) is permitted to balkanize the
Internet, granting patent owners the right to exact heavy
taxes on widely-used conduits for online expression.
Like all congressional powers, the power to issue pa-
tents and copyrights is circumscribed by the First
Amendment. See Golan v. Holder, 132 S. Ct. 873, 889–93
(2012); Eldred v. Ashcroft, 537 U.S. 186, 219–21 (2003).
In the copyright context, the law has developed “built-in
First Amendment accommodations.” Eldred, 537 U.S. at
219; see also Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189, 201 (1985) (noting that the Lanham Act
contains safeguards to prevent trademark protection from
“tak[ing] from the public domain language that is merely
descriptive”). Specifically, copyright law “distinguishes
between ideas and expression and makes only the latter
eligible for copyright protection.” Eldred, 537 U.S. at 219;
see also Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539, 556 (1985) (explaining that “copyright’s
idea/expression dichotomy” supplies “a definitional bal-
ance between the First Amendment and the Copyright
Act by permitting free communication of facts while still
protecting an author’s expression” (citations and internal
4 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
quotation marks omitted)). It also applies a “fair use”
defense, permitting members of “the public to use not only
facts and ideas contained in a copyrighted work, but also
expression itself in certain circumstances.” Eldred, 537
U.S. at 219; see 17 U.S.C. § 107 (“[T]he fair use of a copy-
righted work, including such use by reproduction in copies
. . . for purposes such as criticism, comment, news report-
ing, teaching (including multiple copies for classroom
use), scholarship, or research, is not an infringement of
copyright.”).
Just as the idea/expression dichotomy and the fair use
defense serve to keep copyright protection from abridging
free speech rights, restrictions on subject matter eligibil-
ity can be used to keep patent protection within constitu-
tional bounds. Section 101 creates a “patent-free zone”
and places within it the indispensable instruments of
social, economic, and scientific endeavor. See Alice Corp.
v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (emphasiz-
ing that the “building blocks of human ingenuity” are
patent ineligible); Benson, 409 U.S. at 67 (stating that
“mental processes . . . and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific
and technological work”). Online communication has
become a “basic tool[],” Benson, 409 U.S. at 67, of modern
life, driving innovation and supplying a widely-used
platform for political dialogue. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (noting
that the Internet “is a ubiquitous information-
transmitting medium”); see also U.S. Telecom Ass’n v.
Fed. Commc’n Comm’n, 825 F.3d 674, 698 (D.C. Cir. 2016)
(explaining that online communication “has transformed
nearly every aspect of our lives, from profound actions
like choosing a leader, building a career, and falling in
love to more quotidian ones like hailing a cab and watch-
ing a movie”). Section 101, if properly applied, can pre-
serve the Internet’s open architecture and weed out those
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 5
patents that chill political expression and impermissibly
obstruct the marketplace of ideas.
As both the Supreme Court and this court have rec-
ognized, section 101 imposes “a threshold test,” Bilski v.
Kappos, 561 U.S. 593, 602 (2010), one that must be satis-
fied before a court can proceed to consider subordinate
validity issues such as non-obviousness under 35 U.S.C.
§ 103 or adequate written description under 35 U.S.C.
§ 112. See Parker v. Flook, 437 U.S. 584, 593 (1978)
(“Flook”) (“The obligation to determine what type of
discovery is sought to be patented” so as to determine
whether it falls within the ambit of section 101 “must
precede the determination of whether that discovery is, in
fact, new or obvious.”); In re Comiskey, 554 F.3d 967, 973
(Fed. Cir. 2009) (“Only if the requirements of § 101 are
satisfied is the inventor allowed to pass through to the
other requirements for patentability, such as novelty
under § 102 and . . . non-obviousness under § 103.” (cita-
tions and internal quotation marks omitted)); State St.
Bank & Trust Co. v. Signature Fin. Grp., Inc., 149 F.3d
1368, 1372 n.2 (Fed. Cir. 1998) (explaining that section
101 is “[t]he first door which must be opened on the
difficult path to patentability” (citations and internal
quotation marks omitted)). Indeed, if claimed subject
matter is not even eligible for patent protection, any
pronouncement on whether it is novel or adequately
supported by the written description constitutes an im-
permissible advisory opinion. See, e.g., Golden v. Zwick-
ler, 394 U.S. 103, 108 (1969) (emphasizing that Article III
courts “do not render advisory opinions” (citations and
internal quotation marks omitted)).
The public has a “paramount interest in seeing that
patent monopolies . . . are kept within their legitimate
scope.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
2144 (2016) (citations and internal quotation marks
omitted); see also Medtronic, Inc. v. Mirowski Family
Ventures, LLC, 134 S. Ct. 843, 851 (2014). Nowhere is
6 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
that interest more compelling than in the context of
claims that threaten fundamental First Amendment
freedoms. See Palko v. Connecticut, 302 U.S. 319, 326–27
(1937) (“[F]reedom of thought and speech . . . is the ma-
trix, the indispensable condition, of nearly every other
form of freedom.”). “As the most participatory form of
mass speech yet developed, the Internet deserves the
highest protection from governmental intrusion.” ACLU
v. Reno, 929 F. Supp. 824, 883 (E.D. Pa. 1996), aff’d, 521
U.S. 844 (1997). A robust application of section 101 at the
outset of litigation will ensure that the essential channels
of online communication remain “free to all men and
reserved exclusively to none,” Funk Brothers Seed Co. v.
Kalo Inoculant Co., 333 U.S. 127, 130 (1948).
II.
Most of the First Amendment concerns associated
with patent protection could be avoided if this court were
willing to acknowledge that Alice sounded the death knell
for software patents. The claims at issue in Alice were
directed to a computer-implemented system for mitigating
settlement risk. 134 S. Ct. at 2352–53. Although the
petitioners argued that their claims were patent eligible
because they were tied to a computer and a computer is a
tangible object, the Supreme Court unanimously and
emphatically rejected this argument. Id. at 2358–60. The
Court explained that the “mere recitation of a generic
computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. at 2358. Ac-
cordingly, “[t]he fact that a computer necessarily exist[s]
in the physical, rather than purely conceptual, realm is
beside the point” in the section 101 calculus. Id.
(citations and internal quotation marks omitted).
Software is a form of language—in essence, a set of
instructions. See Microsoft Corp. v. AT&T Corp., 550 U.S.
437, 447 (2007) (explaining that “software” is “the set of
instructions, known as code, that directs a computer to
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 7
perform specified functions or operations” (citations and
internal quotation marks omitted)); see also 17 U.S.C.
§ 101 (defining a “‘computer program,’” for purposes of the
Copyright Act, as “a set of statements or instructions to be
used directly or indirectly in a computer in order to bring
about a certain result”). It is inherently abstract because
it is merely “an idea without physical embodiment,”
Microsoft, 550 U.S. at 449 (emphasis added). Given that
an “idea” is not patentable, see, e.g., Benson, 409 U.S. at
67, and a generic computer is “beside the point” in the
eligibility analysis, Alice, 134 S. Ct. at 2358, all software
implemented on a standard computer should be deemed
categorically outside the bounds of section 101.
The central problem with affording patent protection
to generically-implemented software is that standard
computers have long been ceded to the public domain.
See Flook, 437 U.S. at 593 n.15 (“[I]n granting patent
rights, the public must not be deprived of any rights that
it theretofore freely enjoyed” (citations and internal
quotation marks omitted)). Because generic computers
are ubiquitous and indispensable, in effect the “basic
tool[],” Benson, 409 U.S. at 67, of modern life, they are not
subject to the patent monopoly. In the section 101 calcu-
lus, adding software (which is as abstract as language) to
a conventional computer (which rightfully resides in the
public domain) results in a patent eligibility score of zero.
See Alice, 134 S. Ct. at 2358 (“Stating an abstract idea
while adding the words ‘apply it with a computer’ simply
combines those two steps, with the same deficient re-
sult.”).
Software lies in the antechamber of patentable inven-
tion. Because generically-implemented software is an
“idea” insufficiently linked to any defining physical struc-
ture other than a standard computer, it is a precursor to
technology rather than technology itself. See Mackay
Radio & Tel. Co. v. Radio Corp., 306 U.S. 86, 94 (1939)
(“While a scientific truth, or the mathematical expression
8 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
of it, is not patentable invention, a novel and useful
structure created with the aid of knowledge of scientific
truth may be.”). It is well past time to return software to
its historical dwelling place in the domain of copyright.
See Benson, 409 U.S. at 72 (citing a report from a presi-
dential commission explaining that copyright is available
to protect software and that software development had
“undergone substantial and satisfactory growth” even
without patent protection (citations and internal quota-
tion marks omitted)); Oracle Am., Inc. v. Google Inc., 750
F.3d 1339, 1380 (Fed. Cir. 2014) (noting that “several
commentators” have “argue[d] that the complex and
expensive patent system is a terrible fit for the fast-
moving software industry” and that copyright provides
“[a] perfectly adequate means of protecting and rewarding
software developers for their ingenuity” (citations and
internal quotation marks omitted)); Peter S. Menell, An
Analysis of the Scope of Copyright Protection for Applica-
tion Programs, 41 Stan. L. Rev. 1045, 1076 (1989) (ex-
plaining that patents were historically “not seen as a
viable option for the protection of most application pro-
gram code” and that many software programs “simply do
not manifest sufficient novelty or nonobviousness to merit
patent protection”).
Software development has flourished despite—not be-
cause of—the availability of expansive patent protection.
See Brief of Amicus Curiae Elec. Frontier Found. in
Support of Respondents, Alice, 134 S. Ct. 2347 (No. 13-
298), 2014 WL 828047, at *6–7 (“EFF Brief”) (“The soft-
ware market began its rapid increase in the early 1980s
. . . more than a decade before the Federal Circuit concoct-
ed widespread software patents in 1994. . . . Obviously,
no patents were needed for software to become a $60
billion/year industry by 1994.”); Mark A. Lemley, Soft-
ware Patents and the Return of Functional Claiming,
2013 Wis. L. Rev. 905, 935 (2013) (“Software patents . . .
have created a large number of problems for the industry,
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 9
particularly for the most innovative and productive com-
panies. . . . [T]he existence of a vibrant open source
community suggests that innovation can flourish in
software absent patent protection.” (footnote omitted));
Wendy Seltzer, Software Patents and/or Software Devel-
opment, 78 Brook. L. Rev. 929, 930 (2013) (“Seltzer”)
(“Present knowledge and experience now offer sufficient
evidence that patents disserve software innovation.”); Arti
K. Rai, John R. Allison, & Bhaven N. Sampat, University
Software Ownership and Litigation: A First Examination,
87 N.C. L. Rev. 1519, 1555–56 (2009) (“While most small
biotechnology firms that receive venture financing have
patents, the available empirical evidence indicates that
most software start-ups that receive venture financing,
particularly in the first round, do not have patents.”).
From an eligibility perspective, software claims suffer
from at least four insurmountable problems. First, their
scope is generally vastly disproportionate to their techno-
logical disclosure. In assessing patent eligibility, “the
underlying functional concern . . . is a relative one: how
much future innovation is foreclosed relative to the con-
tribution of the inventor.” Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1303 (2012); see
also Motion Picture Patents Co. v. Universal Film Mfg.
Co., 243 U.S. 502, 513 (1917) (“[T]he inventor [is entitled
to] the exclusive use of just what his inventive genius has
discovered. It is all that the statute provides shall be
given to him and it is all that he should receive, for it is
the fair as well as the statutory measure of his reward for
his contribution to the public stock of knowledge.”).
Software patents typically do not include any actual code
developed by the patentee, but instead describe, in inten-
tionally vague and broad language, a particular goal or
objective. See Dan L. Burk & Mark A. Lemley, Is Patent
Law Technology-Specific?, 17 Berkeley Tech. L. J. 1155,
1164–65 (2002) (“Unfortunately, the Federal Circuit’s
peculiar direction in the software enablement cases has
10 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
effectively nullified the disclosure requirement for soft-
ware patents. And since source code is normally kept
secret, software patentees generally disclose little or no
detail about their programs to the public.” (footnote
omitted)). Here, for example, the ’610 patent discusses
the objective of “screen[ing] computer data for viruses . . .
before communicating the computer data to an end user,”
’610 patent, col. 1 ll. 59–61, but fails to disclose any specif-
ic, inventive guidance for achieving that goal. In effect,
the ’610 patent, like most software patents, describes a
desirable destination but neglects to provide any intelligi-
ble roadmap for getting there.
A second, and related, problem with software patents
is that they provide incentives at the wrong time. Be-
cause they are typically obtained at the “idea” stage,
before any real inventive work has been done, such pa-
tents are incapable of effectively incentivizing meaningful
advances in science and technology. “A player focused on
patenting can obtain numerous patents without develop-
ing any of the technologies to useful levels of deployment
or disclosure, leaving a minefield of abstract patent claims
for others who actually deploy software.” Seltzer, 78
Brook. L. Rev. at 931. Here, for example, it took no
significant inventive effort to recognize that communica-
tions should be screened for harmful content before deliv-
ery. The hard work came later, when software developers
created screening systems capable of preventing our email
boxes from being overrun with spam or disabled by virus-
es. Granting patents on software “ideas”—before they
have been actually reduced to practice—has created a
perverse incentive scheme. Under our current regime,
those who scamper to the PTO early, often equipped with
little more than vague notions about using computers to
automate well-known business and social practices, can
reap hefty financial dividends. By contrast, those who
actually create and deploy useful computer-centric prod-
ucts are “rewarded” with mammoth potential infringe-
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 11
ment liability. See id. at 972 (“In software . . . the long
road from idea to implementation often snags on patents
early in the course. Engineers can describe what they
want software to do—in terms that have been sufficient
for the PTO—well before they have made it work. Pres-
sures to patent early produce a thicket of pre-
implementation claims.”); EFF Brief, 2014 WL 828047, at
*23 (describing a study which “found that between 2007
and 2011, 46 percent of patent lawsuits involved software
patents, accounting for 89 percent of the increase in the
number of patent defendants during this timeframe”).
Yet another intractable problem with software pa-
tents is their sheer number. See Brief Of Amici Curiae
Checkpoint Software, Inc. et al. in Support of Respond-
ents, Alice, 134 S. Ct. 2347 (No. 13-298), 2014 WL 828039,
at *8 (“[B]ecause computer products—as opposed to
patents—inevitably integrate complex, multicomponent
technology, any given product is potentially subject to a
large number of patents. . . . Some industry experts have
estimated that 250,000 patents go into a modern
smartphone.” (citations omitted)). Given the vast number
of software patents—most of which are replete with
broad, functional claims—it is virtually impossible to
innovate in any technological field without being en-
snared by the patent thicket. See id. (describing the
“overwhelming set of overlapping patent rights that
impede innovation”). Software patents impose a
deadweight loss on the nation’s economy, erecting often
insurmountable barriers to innovation and forcing com-
panies to expend exorbitant sums defending against
meritless infringement suits. See Shawn P. Miller,
“Fuzzy” Software Patent Boundaries and High Claim
Construction Reversal Rates, 17 Stan. Tech. L. Rev. 809,
810 (2014) (“Patent litigation is so expensive it has been
described as the sport of kings. . . . These expenses,
however, may be dwarfed by the social cost of patent
litigation in reducing incentives for producers to bring
12 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
innovative products to market.” (footnote and internal
quotation marks omitted)).
Fourth, and most fundamentally, generically-
implemented software invariably lacks the concrete
borders the patent law demands. See, e.g., Digital Equip.
Corp. v. AltaVista Tech., Inc., 960 F. Supp. 456, 462 (D.
Mass. 1997) (“The Internet has no territorial boundaries.
To paraphrase Gertrude Stein, as far as the Internet is
concerned, not only is there perhaps ‘no there there,’ the
‘there’ is everywhere where there is Internet access.”).
Patent protection is all about boundaries. An applicant
has the right to obtain a patent only if he can describe,
with reasonable clarity, the metes and bounds of his
invention. See Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 535 U.S. 722, 730 (2002) (explaining that
the patent “monopoly is a property right[] and like any
property right, its boundaries should be clear”). A proper-
ly issued patent claim represents a line of demarcation,
defining the territory over which the patentee can exer-
cise the right to exclude. See Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014) (emphasiz-
ing that “a patent must be precise enough to afford clear
notice of what is claimed, thereby appris[ing] the public of
what is still open to them” (citations and internal quota-
tion marks omitted)).
Software, however, is akin to a work of literature or a
piece of music, undeniably important, but too unbounded,
i.e., too “abstract,” to qualify as a patent-eligible inven-
tion. See Microsoft, 550 U.S. at 447–48 (explaining that
software “instructions . . . detached from any medium” are
analogous to “[t]he notes of Beethoven’s Ninth Sympho-
ny”). And, as discussed previously, given that generic
computers are both omnipresent and indispensable, they
are incapable of providing structure “sufficiently definite
to confine the patent monopoly within rather definite
bounds,” Benson, 409 U.S. at 69. In short, because direct-
ing that software should be applied via standard comput-
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 13
er elements is little different than stating that it should
be written down using pen and paper, generically-
implemented software lacks the concrete contours re-
quired by section 101. See Alice, 134 S. Ct. at 2352 (em-
phasizing that “merely requiring generic computer
implementation” does not remove claims from the realm
of the abstract).
Declaring that software implemented on a generic
computer falls outside of section 101 would provide much-
needed clarity and consistency in our approach to patent
eligibility. It would end the semantic gymnastics of trying
to bootstrap software into the patent system by alleging it
offers a “specific method of filtering Internet content,” see
BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), makes the
computer faster, see Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1337–39 (Fed. Cir. 2016), or the Internet
better, see DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014), just to snuggle up to a
casual bit of dictum in Alice, 134 S. Ct. at 2359. Software
runs computers and the Internet; improving them up to
the current limits of technology is merely more of the
same. The claims at issue in BASCOM, Enfish, and DDR,
like those found patent ineligible in Alice, do “no more
than require a generic computer to perform generic com-
puter functions,” Alice, 134 S. Ct. at 2359. Eliminating
generically-implemented software patents would clear the
patent thicket, ensuring that patent protection promotes,
rather than impedes, “the onward march of science,”
O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853), and
allowing technological innovation to proceed apace.
United States Court of Appeals
for the Federal Circuit
______________________
INTELLECTUAL VENTURES I LLC,
Plaintiff-Appellant
v.
SYMANTEC CORP.,
Defendant-Cross-Appellant
TREND MICRO INCORPORATED, TREND MICRO,
INC. (USA),
Defendants-Appellees
______________________
2015-1769, 2015-1770, 2015-1771
______________________
Appeals from the United States District Court for the
District of Delaware in Nos. 1:10-cv-01067-LPS, 1:12-cv-
01581-LPS, Chief Judge Leonard P. Stark.
______________________
STOLL, Circuit Judge, dissenting in part.
I concur in the result reached by the majority except
with respect to the ’610 patent. I would affirm the judg-
ment of the district court that asserted claim 7 of the ’610
patent is eligible under § 101.
The ’610 patent confirms that the claimed invention
“advantageously screen[s] computer data for viruses
within a telephone network before communicating the
computer data to an end user.” ’610 patent col. 1 ll. 59–
61. The patent explains that this was a fundamental
2 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
architectural shift from prior-art virus screening, which
occurred locally on an end user’s computer rather than
centrally as in the invention. Id. col. 1 ll. 10–11. This
shift improved the overall security of telecommunication
networks by thwarting the ability of viruses to reach and
exploit end users. Using the patented invention, end
users could communicate over a network “without concern
of receiving various predetermined computer viruses.” Id.
col. 1 ll. 63–64; see also Intellectual Ventures I LLC v.
Symantec Corp. (Dist. Ct. Op.), 100 F. Supp. 3d 371, 400
(D. Del. 2015). As IV’s expert, Dr. McDaniel, testified at
trial, “the key about the ’610[] is because it’s actually on a
network, . . . it’s out on the cloud. So that’s a big ad-
vantage, because all of the dangerous code goes out there”
and it becomes “somebody else’s problem to deal with it,”
not the end users’. J.A. 800 (Trial Tr. 518 ll. 9–16).
Additionally, as the district court noted, the patent helped
solve “the problem of individual computer users having
periodically to update their virus screening software
locally on their computers in order to ensure adequate
protection from computer viruses.” Dist. Ct. Op., 100
F. Supp. 3d at 400; see also ’610 patent col. 1 ll. 20–23
(explaining that in prior art configurations “each comput-
er user has to repeatedly upgrade the virus screening
software installed on his/her computer to ensure protec-
tion from recently-discovered viruses”). Dr. McDaniel
described this improvement as closing the virus “protec-
tion gap” that existed in computer networks before the
’610 patent because “as soon as Symantec knows about a
virus, you have got protection in your e-mail immediate-
ly.” J.A. 808 (Trial Tr. 526 ll. 2–7); see also id. 800 (Trial
Tr. 518 ll. 2–6).
I agree with the district court that the claimed inven-
tion is eligible under § 101. Dist. Ct. Op., 100 F. Supp. 3d
at 396–400. Analyzing claim 7 under the Mayo/Alice
framework, I accept the majority’s step-one determination
that the patent is directed to the abstract idea of “virus
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 3
screening.” Maj. Op. 20. But I depart from the majority’s
analysis at step two—the “search for an ‘inventive con-
cept’” that “‘transform[s]’ the claimed abstract idea into a
patent-eligible application.” Alice, 134 S. Ct. at 2355,
2357 (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1294, 1298 (2012)). The
majority gives short shrift to the Supreme Court’s instruc-
tion that in step two we must “consider the elements of
each claim both individually and ‘as an ordered combina-
tion.’” Alice, 134 S. Ct. at 2355 (emphasis added) (quoting
Mayo, 132 S. Ct. at 1297). The Supreme Court explained
that this approach “is consistent with the general rule
that patent claims ‘must be considered as a whole.’” Alice,
134 S. Ct. at 2355 n.3 (quoting Diamond v. Diehr, 450
U.S. 175, 188 (1981)) (citing Parker v. Flook, 437 U.S. 584,
594 (1978)).
Claim 7 is eligible as an ordered combination. While
the network components and virus screening software
recited by the claim may themselves be conventional, “an
inventive concept can be found in the non-conventional
and non-generic arrangement of known, conventional
pieces.” BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). As
described above, claim 7’s inventive concept is moving
virus screening software from its typical location on end
users’ computers and deploying it instead “within the
telephone network” itself. ’610 patent col. 14 l. 37. Thus,
the invention harnesses network architecture and exploits
it by utilizing a non-conventional and non-generic ar-
rangement of virus screening components, which im-
proves overall network security and usability. As to this
arrangement being non-conventional and non-generic, the
district court had before it IV’s expert testimony that the
invention provided a novel solution to the protection gap
problem and greatly reduced the likelihood of an end user
receiving a virus when it held claim 7 eligible. I also note
that the jury verdict in the Symantec case—the only one
4 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
of the consolidated cases that went to trial—found the
’610 patent not invalid over the asserted prior art. While
I recognize that validity under §§ 102 and 103 is a distinct
inquiry from eligibility under § 101, and may not be
dispositive of § 101, the jury verdict nonetheless supports
the notion that this particular ordering of the components
in claim 7 was not conventional at the time. See Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347
(Fed. Cir. 2015) (“[P]ragmatic analysis of § 101 is facili-
tated by considerations analogous to those of §§ 102 and
103 as applied to the particular case.”).
The claimed invention is also markedly similar to that
in BASCOM, where we vacated the district court’s ineligi-
bility determination on the basis of a step-two ordered
combination. Compare ’610 patent col. 1 ll. 59–61 (“Em-
bodiments of the present invention advantageously screen
computer data for viruses within a telephone network
before communicating the computer data to an end us-
er.”), with BASCOM, 827 F.3d at 1348 (“The claims of the
’606 patent are directed to filtering content on the Inter-
net,” i.e., not on a user’s local computer). We found the
abstract idea in BASCOM to be “filtering content,”
BASCOM, 827 F.3d at 1348–49, similar to the abstract
idea of “virus screening” in this case, Maj. Op. 20. Unlike
the majority here, this court in BASCOM recognized that
although “the limitations of the claims, taken individual-
ly, recite generic computer, network and Internet compo-
nents,” the patent’s “particular arrangement of elements
is a technical improvement over prior art ways of filtering
such content.” BASCOM, 827 F.3d at 1349, 1350. The
court in BASCOM identified several concrete problems
that the patent in that case addressed, much like how the
patent before us addressed specific technological issues
with virus screening, such as the protection gap. Thus,
the court found the claims of the BASCOM patent to be
“more than a drafting effort designed to monopolize the
[abstract idea],” id. at 1350–51 (quoting Alice, 134 S. Ct.
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 5
at 2357), because they “may be read to ‘improve an exist-
ing technological process,’” id. at 1351 (quoting Alice, 134
S. Ct. at 2358 (discussing claims in Diehr, 450 U.S. 175)).
There is no meaningful difference between BASCOM and
this case in terms of eligibility because claim 7 also “pur-
port[s] to improve the functioning of the computer itself,”
or, at the very least, the functioning of the network. Dist.
Ct. Op., 100 F. Supp. 3d at 400 (quoting Alice, 134 S. Ct.
at 2359); see also Oral Argument at 25:30–26:17, availa-
ble at http://oralarguments.cafc.uscourts.gov/default.
aspx?fl=2015-1769.mp3 (counsel for Symantec acknowl-
edging that, under Alice, a patent that improves the
functioning of a network may be patent eligible under
§ 101).
I disagree with the majority’s characterization of this
case as fitting within our line of cases rendering ineligible
patents that merely “perform[] otherwise abstract activity
on the Internet.” Maj. Op. 20. The claims at issue in
those cases, like the claims at issue in Alice, simply
invoked the Internet as a means to an end; they did not
improve the security and functioning of the Internet itself.
Patents that fall within that paradigm are ineligible
because “the focus of the[ir] claims is not on such an
improvement in computers as tools, but on certain inde-
pendently abstract ideas that use computers as tools.”
Elec. Power Grp., LLC v. Alstom S.A., No. 2015-1778,
2016 WL 4073318, at *4 (Fed. Cir. Aug. 1, 2016). In
contrast, claim 7 constitutes an improvement of the
network itself and, thus, focuses on improving computers
as tools. See BASCOM, 827 F.3d at 1351 (describing
similar patent as “not claiming the idea of filtering con-
tent simply applied to the Internet” but rather “a technol-
ogy-based solution . . . to filter content on the Internet
that overcomes existing problems with other Internet
filtering systems”). Describing claimed inventions similar
to the one at issue here, we have said that we “are not
persuaded that the invention’s ability to run on a general-
6 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.
purpose computer dooms the claims” if the claims “are
directed to an improvement in the functioning of a com-
puter.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1338–39 (Fed. Cir. 2016) (distinguishing collection of
cases involving claims which “simply add[] conventional
computer components to well-known business practices”).
For these reasons, I respectfully dissent from the ma-
jority opinion regarding the ’610 patent and would affirm
the judgment of the district court holding that asserted
claim 7 of the ’610 patent is eligible under § 101.