US Patent No. 7,679,637 LLC v. Google LLC

Under Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014) (“Alice”), a court asks first whether patent claims are “directed to” a patent-ineligible concept, such as an abstract idea, and second whether the claims’ additional elements supply an “inventive concept.” An issued patent “shall be presumed valid.” 35 U.S.C. § 282. In 35 U.S.C. § 112 Congress prescribed what a patent’s specification must disclose and how claims may be drafted. In this case the Federal Circuit held the asserted claims ineligible at both steps of that framework, finding the claims do not “describe how” their goal is achieved, while declining to decide whether the district court’s formulation of the abstract idea was an overgeneralization. The specification describes how in prose, in figures containing pseudo-code and C++ source code, and in a program listing appendix; the opinion mentions none of them. The specification also records that, at the time of the invention, “current web conferencing systems are unable to enable participants to asynchronously observe a live meeting.” One asserted claim recites its storage element in means-plus-function form, importing the disclosed structure by construction; no court construed it. The courts below resolved the case on the pleadings, faulting the complaint for lacking factual allegations of unconventionality and denying leave to add them as futile. The questions presented are: 1. Whether a court applying Alice may hold patent claims ineligible at both steps because they do not describe how their result is achieved, so that the identity of the abstract idea has no effect on the outcome, converting 35 U.S.C. § 101 into a disclosure inquiry that belongs to 35 U.S.C. § 112, conducted without evidence, claim construction, or the challenger’s burden of proof. 2. Whether a patent-infringement complaint may be dismissed because the patent owner did not plead facts negating ineligibility, an invalidity defense that 35 U.S.C. § 282(b) requires the accused infringer to plead, and where leave to add those facts was denied as futile.