Innovaport LLC v. Target Corporation

Section 101 of the Patent Act, 35 U.S.C. § 101, provides that “any new and useful process, machine, manufacture or composition of matter” is eligible for patenting. That provision is subject to 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 Innovaport’s patent claims, which involve responding to a product location inquiry by providing the location of the product with additional relevant information that was not the subject of the inquiry, are unpatentable as an abstract idea. In doing so, the Federal Circuit (i) failed to attribute any weight to the United States Patent and Trademark Office’s (“USPTO’s”) findings regarding eligibility under § 101 notwithstanding the presumption of validity accorded to patents under 35 U.S.C. § 282 (ii) did not consider the doctrine of preemption, i.e., whether the claimed invention would preempt an entire field and therefore grant a monopoly over an abstract idea; (iii) found that Innovaport’s patent claims were ineligible for patenting particularly because the patent claims did not recite fundamental or technological improvements to computer capabilities or functionality; and (iv) made factual findings without citing to record evidence. The questions presented are:

1. Whether a court can disregard the USPTO’s eligibility findings under 35 U.S.C. § 101? 2. Whether a court may disregard preemption considerations when evaluating patent eligibility under 35 U.S.C. § 101?

2. Whether a computer-related invention can be patent eligible when directed toward a useful, practical application even if the invention does not change or improve computer technology, computer capabilities, or computer functionality?

3. Whether a court may make factual findings on a motion for summary judgment regarding conventionality of recited claim limitations under Alice without supporting evidence in the record?