Richards Layton & Finger
 

Judge Sleet Grants Motion for Judgment on the Pleadings Under Alice

August 18, 2016

In VideoShare LLC v. Google Inc., C.A. No. 13-990-GMS (D. Del. Aug. 2, 2016), Judge Sleet granted the motion for judgment on the pleadings filed by the defendants, Google, Inc. and YouTube, LLC, invalidating the two patents at issue under Section 101 for claiming patent-ineligible subject matter.

The plaintiff, VideoShare, LLC (“VideoShare”), alleged infringement of two patents regarding the sharing of streaming videos over a network, one of which additionally claimed features relating to advertising. The defendants argued that translating and sharing content such as video segments, with or without associated advertisements, was a patent-ineligible abstract idea, and that merely applying the abstract idea using computers and the internet did not supply an inventive concept.

While the Court rejected each side’s characterization of the claims as reflecting an overly high level of abstraction, on the one hand, and an overly detailed description, on the other, Judge Sleet nevertheless determined that the claims were directed to an abstract idea. Specifically, Judge Sleet noted that the patents did not claim an improvement in computer functionality—the tangible components claimed would “merely provide a generic environment for carrying out the abstract idea.” According to the Court, the file format conversion described in the patent did not disclose specific algorithms or software code, nor did VideoShare invent thumbnails or the process to extract thumbnails from video files or embed them. Instead, the claims used technology to “automate a sequence of known steps” that otherwise could be performed manually by a human.

Judge Sleet next found that the limitations of the claims did not contain an inventive concept, since they did not recite any features beyond the functions and capabilities of conventional computers or computer networks. Judge Sleet granted the defendants’ motion for judgment on the pleadings and dismissed the case accordingly.

Key Points: The impact of post-Alice opinions is starting to be felt in the District of Delaware. The Court noted that the language of the claims at issue was comparable to the language of the claims determined to be patent-ineligible in In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016), and Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015). Also, in a number of cases with pending Section 101 motions, Chief Judge Stark has requested supplemental briefing from the parties to consider the new appellate guidance.