Earlier this month the Federal Circuit issued its opinion in Arendi S.A.R.L. v. Oath Holdings Inc., a patent case we have been following because it attracted an amicus brief. In this case, Arendi S.A.R.L. appealed a judgment of a district court, raising questions concerning patent eligibility, claim construction, indefiniteness, and infringement. In an opinion authored by Judge Linn and joined by Judges Dyk and Hughes, the court affirmed the judgment. This is our summary of the opinion.
Judge Linn began by outlining the factual and procedural background:
Arendi filed two related infringement suits in the District of Delaware, one against Google and one against Oath. . . . The asserted patents generally concern identifying information in a document and using that information to search for related information in an external source, such as a contact database. . . .
After claim construction, Google and Oath moved for judgment on the pleadings under Rule 12(c), arguing that the asserted claims were directed to patent-ineligible subject matter under 35 U.S.C. § 101. . . . The district court granted the motion as to the representative claims of the ’854, ’356, and ’993 patents, but denied the motion as to the ’843 patent.
The case then proceeded on the ’843 patent. Google moved for summary judgment of noninfringement as to asserted claims 23 and 30 of the ’843 patent. The district court granted the motion as to Google’s Linkify and Smart Linkify products because the alleged ‘documents’ were not editable but denied the motion as to other Google products. Oath separately moved for summary judgment of noninfringement of claim 23 of the ’843 patent. The district court granted Oath’s motion, concluding that Arendi had not shown that Oath directly infringed the asserted computer readable-medium claim. The district court then entered judgment in favor of Oath, and Arendi appealed.
The remaining Google claims proceeded to trial. The jury found that Arendi had not proven that Google infringed claims 23 or 30 of the ’843 patent and that Google had proven by clear and convincing evidence that those claims were invalid as anticipated and obvious. Arendi moved for judgment as a matter of law on anticipation and obviousness. The district court denied Arendi’s motion, noting that because Google did not seek a declaratory judgment of invalidity, the Court ‘has discretion to not consider Arendi’s [invalidity] arguments’ and elects to exercise that discretion to avoid ‘a waste of judicial resources.’ The district court then entered a judgment stating that ‘[j]udgment is entered in favor of Defendant and against Plaintiff on Plaintiff’s claim of patent infringement’ . . . .
After oral argument, we ordered the parties to seek clarification from the district court as to whether the judgment rested on noninfringement alone or also incorporated the jury’s invalidity verdict. The district court entered an amended final judgment clarifying that the jury found noninfringement, anticipation, and obviousness as to claims 23 and 30 of the ’843 patent, and that ‘all of the jury’s findings remain undisturbed and have not been set aside.’
After the case’s background, Judge Linn noted the “parties devote[d] substantial attention to the scope of the district court’s final judgment and, relatedly, to what issues are properly before us on appeal.” He explained, however, the “district court’s amended judgment resolves that dispute” and “clarifies that, as to the ’843 patent, the jury found both noninfringement and invalidity.”
Reaching the dispute, Judge Linn began with “Arendi’s challenges to the district court’s analysis” that “the ’356, ’854, and ’993 patents are directed to patent-ineligible subject matter.” He rejected Arendi’s argument that “those claims, like the ’843 patent, are directed to an improvement in computer functionality.” Instead, Judge Linn “agree[d] with the district court that the asserted claims of the ’356, ’854, and ’993 patents are directed to an abstract idea.” In particular, Judge Linn said the claims recite the “same basic process” of “identifying information in a document, using that information to search for related information in an external source, and using the results of that search to perform some action.” He explained that the court has “long held that claims directed to ‘collecting information, analyzing it, and displaying certain results of the collection and analysis’ are abstract.”
Judge Linn then turned to the merits the ‘843 patent dispute. He explained that the “district court’s contrary conclusion [on eligibility] rested on its characterization of the ’843 patent as reciting ‘beneficial coordination’ between a first computer program displaying a document and a second computer program searching an external information source.” Judge Linn, however, said “beneficial coordination” “originates from a prior decision of this court addressing obviousness, not patent eligibility.” Moreover, he said, “‘beneficial coordination’ itself is an abstract idea.” He explained that, “[w]hile a specific technique for coordinating two programs may in certain circumstances be patent eligible, here, claim 1 of the ’843 patent does not describe ‘a concrete asserted improvement in how’ the two computer programs work together while allowing the document to stay displayed.”
Judge Linn then addressed the second step of the eligibility analysis for all four patents. He explained that, at “this step, we ask whether the claims contain an ‘inventive concept’ sufficient to ‘transform the nature of the claim’ into a patent-eligible application.” On this point he agreed with “the district court that the asserted claims of the ’356, ’854, and ’993 patents do not recite an inventive concept” because “those claims are implemented using generic computer components performing conventional functions.” Next, Judge Linn addressed the merits of this test applied to the ‘843 patent. He explained that “the ’843 patent recites the same sequence of functions identified by the district court with respect to the related patents.” As a result, he found it added “no claimed technical mechanism or nonconventional arrangement” that differentiated it from the other patents.
As a result of Judge Linn’s analysis, the panel affirmed the district court’s judgment.