IP Law Daily, PATENT—N.D. Ill.: Two computer-related patents found to cover ineligible subject matter, (Mar 28, 2024)

By Steven Melendez

A court found the two patents appear to cover abstract ideas of storing and controlling access to information.

A court dismissed without prejudice a lawsuit for infringement of two computing-related patents, explaining the patent holders failed to show the patents covered more than a mere "abstract idea" ineligible for patent protection, namely, storing information and controlling access to it. The patent claims did not recite an inventive concept, but used only conventional technology (Web 2.0 Technologies LLC v. 37signals LLC, March 25, 2024, Blakey, J.).

The case was brought by Web 2.0 Technologies LLC and Pennar Software Corporation against 37signals LLC, which operates Basecamp, claiming the company infringed two patents. One patent, U.S. patent 6,845,448, relates to an "Online Repository for Personal Information" while the other, U.S. patent 8,117,644, relates to a "Method and System for Online Document Collaboration."

The court analyzed the patents under the framework of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l., explaining that while "laws of nature, natural phenomena, and abstract ideas" can't be patented, applications of abstract concepts "to a new and useful end" potentially can be. In this case, 37signals argued that the patents only covered the "abstract idea of storing information" and controlling access to it, which, the company argued, "has been practiced by businesses, governments, and even individuals, for centuries."

The patents, 37signals argued, didn't contain any new technology for carrying out the steps described, which could be performed with generic computer equipment. But the patent holders argued the patents related to "solving computer-specific problems" and "improving computer functionality," making them eligible to be patented. Precedent cited by the court held that while implementing fundamental practices with a computer may simply be an abstract idea, improving the functionality of the computer or other technology may be patentable.

Ultimately, the court found the claimed "methods do not appear to advance 'any particular assertedly inventive technology for performing those functions' and do not purport to provide 'improvements to computer functionality' of any technological components that may be a part of this system."

Nor, the court found, did the patent holders raise legal claims that the patents "recite inventive concepts," which under the Alice ruling and other precedent can be enough for the claims to survive a motion to dismiss. "Indeed, Plaintiff’s complaint contains no allegations concerning any inventive concept and says nothing about any way in which the methods recited in the claims could be characterized as unconventional," according to the ruling.

Still, the court dismissed the complaint without prejudice, giving the patent holders leave to file an amended complaint addressing those issues.

"The specifications of both asserted patents do include language identifying existing problems and suggesting that the patented inventions solve those problems; and such language, if supported by factual allegations in the complaint, could potentially demonstrate inventiveness," according to the ruling.

The Case is No. 1:23-cv-00230.

Attorneys: Jason Michael Wejnert (Devlin Law Firm LLC) for Web 2.0 Technologies, LLC. Jacqueline Genovese Bova (Goodwin Procter LLP) for 37Signals LLC.

Companies: Web 2.0 Technologies, LLC; 37Signals LLC

Cases: Patent IllinoisNews