IP Law Daily, PATENT NEWS: High Court declines to review invalidation of streaming patents as ineligible abstract ideas, (Apr 17, 2017)

By Cheryl Beise, J.D.

The U.S. Supreme Court today declined to review two petitions filed by Affinity Labs of Texas, seeking review of Federal Circuit decisions affirming a Texas district court’s dismissal of Affinity’s infringement suits on the ground that Affinity’s asserted broadcast streaming patents were directed to ineligible subject matter.

In one case, Affinity accused Amazon.com Inc. and Amazon Digital Services, Inc., of infringing U.S. Patent No. 8,688,085 ("the ’085 patent"), entitled "System and Method to Communicate Targeted Information." The ’085 patent was directed to a "method for targeted advertising," in which an advertisement is selected for delivery to the user of a portable device based on at least one piece of demographic information about the user. In the other case, Affinity accused DirecTV and major sports leagues of infringing U.S. Patent No. 7,970,379 ("the ’379 patent"), directed to sending regional broadcast signals to cellular telephones located outside of the broadcaster’s region. The ’085 and ’037 patents shared the same specification.

The district court dismissed both cases, concluding that the asserted patents were directed to abstract ideas. The Federal Circuit affirmed both decisions. The Federal Circuit agreed that the ’085 patent was directed to the abstract idea of "delivering selectable media content and subsequently playing the selected content on a portable device." The appeals court also affirmed that the ’037 patent was directed to the abstract idea of providing out-of-region access to regional broadcast content. The court held that the use of a downloadable app for presenting a graphical user interface for listing content available for streaming was not sufficiently inventive, noting eligibility does not turn on the novelty of the proposed claims.

Affinity’s petitions in both cases (Docket Nos. 16-1046 and 16-1047) posed identical questions:

1. Whether patent claims directed to concrete and tangible inventions—which are neither directed to a mathematical algorithm nor a business method—are eligible subject matter under step one of the Mayo/Alice framework;

2. Whether disregarding limitations of patent claims relating to implementation parameters, or dismissing them as conventional or routine without citing any evidence of such as of the time of the invention, is improper in determining whether a claim constitutes an "abstract idea" under the Mayo/Alice analysis, particularly at a stage of the case when all factual inferences must be drawn in favor of the patentee;

3. Whether an accused infringer bears the burden of proving each patent claim asserted against it is ineligible under 35 U.S.C. §101 by clear and convincing evidence.

The case is Docket Nos. 16-1046 and 16-1047.

Attorneys: Ronald J. Schutz (Robins Kaplan LLP) for Affinity Labs of Texas, LLC. J. David Hadden (Fenwick & West, LLP) for Amazon.com, Inc. and Amazon Digital Services, Inc. Nathan K. Cummings (Cooley, LLP) for MLB Advanced Media, Inc., and MLB Advanced Media, L. P. Darin W. Snyder (O’Melveny & Meyers LLP) for DirecTV, LLC, and DirecTV Digital, LLC. David B. Weaver (Baker Botts, LLP) for NBA Media Ventures, LLC, Turner Digital Basketball Services, Inc., NHL Interactive Cyber Enterprises, LLC, NHL Enterprises, Inc., and NHL Enterprises, L.P.

Companies: Affinity Labs of Texas, LLC; Amazon.com, Inc.; Amazon Digital Services, Inc.; DirecTV, LLC; DirecTV Digital LLC; NBA Media Ventures; Turner Digital Basketball Services, Inc.; NHL Interactive Cyber Enterprises, LLC; NHL Enterprises, Inc.; NHL Enterprises, L.P.; MLB Advanced Media, Inc.; MLB Advanced Media, LP

News: Patent TechnologyInternet