IP Law Daily, PATENT—D. Utah: Business initiative testing system unpatentable as abstract idea, (Jun 26, 2024)

By Kevin M. Finson

The idea of testing business initiatives at certain locations to determine whether they should be implemented at other locations was unpatentable because it amounted to the organization of data using conventional computer components.

Patent claims relating to the testing of business initiatives were invalid for being directed at the abstract idea of organizing data, the U.S. District Court in Salt Lake City has held. The claims did not offer any technological improvements but merely used conventional computer components to carry out the organization of data, (MarketDial, Inc. v. Applied Predictive Technologies, Inc., No. 1:23-cv-00477-JNP-CMR (D. Utah. June 20, 2024)).

MarketDial, Inc. (MarketDial) sought a declaration that U.S. Patent No. RE49,562 (the ’562 patent), which was owned by Applied Predictive Technologies, Inc. (APT), a competitor, was invalid for being directed at an abstract idea. The ’562 patent was a reissuance of U.S. Patent No. 8,571,916 (the ’916 patent), which had previously been found invalid on abstract idea grounds by the same court. Both patents claimed methods, systems, and articles of manufacture for performing analysis of business initiatives implemented at selected business locations to determine if they should be implemented at other locations. The court applied the two-step Alice test.

Abstract idea. APT argued that the patent should be considered non-abstract because it was directed to improvements in machine-learning technologies. The court reviewed the claim language and found this was unsupported: the claims and the specification referred to optimizing parameter settings for business initiative tests and referred to machine-learning technology only in passing. Importantly, there was no claim to any innovation in machine learning or improvement of prior machine-learning technology, only to the use of existing machine-learning technology in the context of testing business initiatives at certain locations. The court held that this was an abstract idea at step one of the Alice test.

Inventive concept. Turning to step two of the Alice test, APT argued that its claims limitations requiring determining actual performance data, determining noise values, determining optimal parameter settings, and configuring a business initiative testing model constituted an inventive concept. The court held that this was just the abstract idea of business test optimization broken down into smaller steps, most of which were routine information-gathering activities performed by conventional computer components operating according to their ordinary functions. The court found that there was no inventive concept that could save the patentability of the asserted claims.

Finding that the asserted patent was invalid, the court granted MarketDial’s motion to dismiss the infringement counterclaim and denied as moot the motion to dismiss the declaratory judgment complaint.

The Case is No. 1:23-cv-00477-JNP-CMR.

Judge: Parrish, J.

Attorneys: Lannie Rex Sears (Maschoff Brennan) for MarketDial, Inc. Ashley M. Gregson (Dentons Durham Jones & Pinegar PC) for Applied Predictive Technologies, Inc.

Companies: MarketDial, Inc.; Applied Predictive Technologies, Inc.

Cases: Patent UtahNews