Real-Time Avatar Selection and Customization Patent Survives § 101 Challenge

MAIN, TECHNOLOGY

In a recent Memorandum Opinion issued in Treehouse Avatar LLC v. Valve Corp., Civ. No. 15-427-SLR (D. Del. Mar. 22, 2016), Judge Robinson of the United States District Court for the District of Delaware denied a 12b(6) motion, holding that the asserted claims addressing the problem of “network site loyalty” were “innovative, i.e., do not represent the ‘routine and conventional’ use of a computer” and provided “sufficient specificity to overcome preemption concerns” and are, therefore, directed to patent eligible subject matter.

In the decision, Judge Robinson discussed the turbulent history of software patents under 35 U.S.C. § 101 and opined that “[g]iven the evolving state of the law, the § 101 analysis should be, and is, a difficult exercise.” Judge Robinson emphasized that the primary purpose of Section 101 is to prevent preemption of fundamental principles—laws of nature, physical phenomena, and abstract ideas. Reciting the history of Section 101’s treatment by the Supreme Court and Federal Circuit, Judge Robinson explained that while fundamental principles cannot be patented, the application of fundamental principles to particular structures or processes may in fact be patent-eligible. Judge Robinson noted that she was “struck by the evolution of the [Section] 101 jurisprudence,” and how many patents, which would have survived Section 101 challenges if mounted at the time of issuance, are routinely invalidated at the pleadings stage based upon the imposition of heightened specificity required by the post-Alice standards. She then noted the difficult task courts face when harmonizing  the current Section 101 specificity requirements with other aspects of patent law, such as enablement under Section 112, or non-obviousness under Section 103, “in light of the Federal Circuit's past characterization of § 101 eligibility as a “coarse” gauge of the suitability of broad subject matter categories for patent protection.”

Turning to the analysis of the asserted claims, Judge Robinson applied the two-step analytical framework of Alice. In analyzing the first step, Judge Robinson noted that because computer software comprises a set of instructions, the first step of Alice is, for the most part, a given; i.e., computer-implemented patents generally involve abstract ideas. Moving to step two—whether the patent involves an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself—Judge Robinson held the asserted claims were analogous to those asserted in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), in which the Federal Circuit held the claims patent eligible because they solved “a problem specifically arising in the realm of computer technology” and the claimed solution specified how computer technology should be manipulated to overcome the problem. In this case, Judge Robinson held that the asserted claims, which recite customizing an avatar based upon user choices in real time, allowing users to communicate with one another through a network including character-enabled sites, and allowing a user to navigate to a different site with the customized character, are innovative and not the “routine and conventional” use of a computer. Additionally, the claims provided sufficient specificity to overcome any preemption concerns. As a result, the claimed invention was more than just the implementation of an abstract idea on a computer, and did not create a risk of preemption of all customizable characters, making it patent-eligible under step two of Alice.

Echoing an opinion shared by many practitioners today, many of Judge Robinson’s comments suggest that the Section 101 analysis applied by many courts might be going too far, especially at the pleadings stage. The question is whether this an isolated decision or the harbinger of a shift in the treatment of software patents at the pleadings stage in the post-Alice environment?

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