Impact Engine, Inc. v. Google LLC

Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture or composition of matter” is eligible for a patent. This Court has added a judicial exception that excludes “laws of nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). The Federal Circuit held Impact Engine’s patent claims for dynamically creating and distributing online ads are an unpatentable abstract idea. A different provision of the Patent Act, 35 U.S.C. § 112(f), authorizes a patent to claim “a specified function without the recital of structure,” in which case the claim must “be construed to cover the corresponding structure” in the specification. When considering whether a subset of Impact Engine’s claims written in § 112(f) form are patent-eligible, the Federal Circuit analyzed the function without considering the structure. That analysis all but assured the claims will be viewed as abstract. The questions presented are:

1. Whether the lodestar for determining patent eligibility under this Court’s two-step framework is whether the patent claims preempt basic technological or scientific building blocks.

2. Whether, when a court is determining if an invention claimed in purely functional terms under § 112(f) is patent-eligible under § 101, it must consider not just the functional claim language but also the specific corresponding structure defining the patent claim’s scope under § 112(f).