Chief Judge Stark Invalidates Patent for Claiming Ineligible Subject Matter
March 29, 2019
Publication| Intellectual Property
In Citrix Systems, Inc. v. AVI Networks, Inc., No. 17-1843-LPS (D. Del. Feb. 13, 2019), Chief Judge Stark granted the defendant’s motion to dismiss claims for infringement of two of the four patents-in-suit on the basis that those patents claimed ineligible subject matter.
The challenged claims concerned methods for determining when a network service is available. The Court explained that instead of deeming a service unavailable only when the response time exceeds a fixed amount of time—“static” response time—the challenged claims incorporated the recent average response time of the network—“dynamic” response time—into the calculation.
Chief Judge Stark agreed with the defendant that under Alice Step 1 the claims were directed to the abstract idea of “determining service availability based on a deviation from average response time”—i.e., by means of a formula. According to the Court, whether to use static or dynamic response times amounted to a choice between one formula or another, but the use of a formula, even an improved one, is still abstract. Chief Judge Stark stated that, even if the use of dynamic response time formula provides technical advantages, the source of the improvement is the formula, which would provide the same advantages in a technical as well as a non-technical application. The Court found that the claims were thus not “directed to” improvements in computer technology.
Under Alice Step 2, the Court found that there was no inventive concept beyond the abstract idea. In response to the plaintiff’s argument that the patents solved a problem unique to computer networks, Chief Judge Stark noted that the patents described the problem of response times as arising in any type of network. For these reasons, the Court granted the motion.
Key Point: In this decision, the Court stated that the USPTO’s recently issued 2019 Revised Patent Subject Matter Eligibility Guidance for examiners is not binding on the Court.