Affinity Labs of Tex., LLC v. Amazon.com Inc.

• Decision Date: 23 September 2016
• Docket Number: 2015–2080
• Citation: 120 U.S.P.Q.2d 1210,838 F.3d 1266
• Parties: Affinity Labs of Texas, LLC, Plaintiff–Appellant v. Amazon.com Inc., Amazon Digital Services, Inc., Defendants–Appellees
• Court: U.S. Court of Appeals — Federal Circuit

838 F.3d 1266

120 U.S.P.Q.2d 1210

Affinity Labs of Texas, LLC, Plaintiff–Appellant

v.Amazon.com Inc., Amazon Digital Services, Inc., Defendants–Appellees

2015–2080

United States Court of Appeals, Federal Circuit.

Decided: September 23, 2016

Cyrus Alcorn Morton , Robins Kaplan LLP, Minneapolis, MN, argued for plaintiff-appellant. Also represented by Ronald James Schutz, Patrick M. Arenz, Brenda L. Joly, Benjamen Linden .

J. David Hadden , Fenwick & West, LLP, Mountain View, CA, argued for defendants-appellees. Also represented by Todd Richard Gregorian, Saina S. Shamilov ; Ravi Ragavendra Ranganath, Adam Michael Lewin , San Francisco, CA; Gabriel Bell, Gregory G. Garre , Latham & Watkins LLP, Washington, DC; Jeffrey H. Dean , Amazon.com, Inc., Seattle, WA.

Before Prost, Chief Judge, Bryson and Wallach, Circuit Judges.

Bryson

, Circuit Judge.

This appeal is related to the appeal in Affinity Labs of Texas, LLC v. DirecTV et al., No. 2015–1845, 838 F.3d 1253, 2016 WL 5335501 (Fed. Cir. 2016)

, decided today. Although the patents at issue in the two cases are different, they share a similar specification. Because the legal issues presented in the two cases are closely related, our discussion of the governing legal principles in that case will not be repeated here, except to the extent that the difference between the claims in the two cases calls for a somewhat different legal analysis.

I

The patent in suit, U.S. Patent No. 8,688,085 (“the '085 patent”)

, is entitled “System and Method to Communicate Targeted Information.” The abstract describes the patent as 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.

Despite the title of the patent and the description in the abstract, only three sentences in the specification and only one of the 20 claims deal with targeted advertising.¹ The rest of the specification and claims are directed to media systems that deliver content to a handheld wireless electronic device.

Claim 14 of the '085 patent

is representative² and provides as follows:

A media system, comprising:

a network based media managing system that maintains a library of content that a given user has a right to access and a customized user interface page for the given user;a collection of instructions stored in a non-transitory storage medium and configured for execution by a processor of a handheld wireless device, the collection of instructions operable when executed: (1) to initiate presentation of a graphical user interface for the network based media managing system; (2) to facilitate a user selection of content included in the library; and (3) to send a request for a streaming delivery of the content; and

a network based delivery resource maintaining a list of network locations for at least a portion of the content, the network based delivery resource configured to respond to the request by retrieving the portion from an appropriate network location and streaming a representation of the portion to the handheld wireless device.

Stated more succinctly, claim 14 is directed to a network-based media system with a customized user interface, in which the system delivers streaming content from a network-based resource upon demand to a handheld wireless electronic device having a graphical user interface.

Affinity sued Amazon.com Inc. and Amazon Digital Services, Inc., alleging that they infringed the '085 patent

by marketing the Amazon Music system, which allows customers to stream music from a customized library. The Amazon entities moved for the entry of judgment on the pleadings, arguing that the asserted claims were not directed to patentable subject matter.

The magistrate judge recommended that judgment be entered in the Amazon entities' favor. Following the two-stage inquiry for patent eligibility set forth by the Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc. , ––– U.S. ––––, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012)

, and Alice Corp. v. CLS Bank International, ––– U.S. ––––, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014), the magistrate judge found that the '085 patent is directed to an abstract idea—“delivering selectable media content and subsequently playing the selected content on a portable device.”

Turning to the next step of the eligibility analysis, the magistrate judge found that the claims of the '085 patent

do not contain an “inventive concept.” Instead, he concluded, the claims are directed to applying the abstract idea “to the Internet and a generic, electronic device—in this case, a wireless handheld device operating as a ‘ubiquitous information-transmitting medium, not a novel machine’ ” (citing Ultramercial, Inc. v. Hulu, LLC , 772 F.3d 709, 716–17 (Fed. Cir. 2014) ). The magistrate judge also found that the components recited in the claims are generic. He explained that the “network based media managing system” is a generic database and that the “non-transitory storage medium” could be any kind of memory.

The magistrate judge rejected Affinity's argument that the customized user interface supplies the inventive concept to the claimed invention. The user interface limitation, the magistrate judge explained, does not identify “any specific technology or instructions that explain how the device can do what it purports to do or direct the practitioner how to carry out the claims.”

The district court agreed with the magistrate judge's recommendation and entered judgment against Affinity. The court agreed with the magistrate judge that the '085 patent

claims are directed to the abstract idea of “delivering selectable media content and subsequently playing the selected content on a portable device.” The court also agreed that the claims do not supply an inventive concept as “[t]he '085 Patent solves no problems, includes no implementation software, designs no system. The mere statement that the method is performed by computer does not satisfy the test of inventive concept.”

II

A

We begin by addressing the first step of the Mayo

/Alice inquiry: whether the claims of the '085 patent are directed to an “abstract idea.” Like the district court, we hold that the concept of delivering user-selected media content to portable devices is an abstract idea, as that term is used in the section 101 context.

The district court's conclusion is consistent with our approach to the “abstract idea” step in prior cases. For example, In re TLI Communications LLC Patent Litigation , 823 F.3d 607 (Fed. Cir. 2016)

, involved a patent on a method for uploading digital images from a cellular telephone to a server, which would then classify and store the images.

Although the claim at issue in that case recited physical components such as a telephone unit and a server, the court noted that “not every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry,” and it pointed out that the specification made clear that the recited physical components “merely provide a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner.” Id. at 611

. The court added that “the specification's emphasis that the present invention ‘relates to a method for recording, communicating and administering [a] digital image’ underscores that [the claim at issue] is directed to an abstract concept.” Id. The TLI court concluded that, as in this case, the claims were directed to “the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.” Id. at 612.

Similarly, in Ultramercial, Inc. v. Hulu, LLC , 772 F.3d 709 (Fed. Cir. 2014)

, we found the process of allowing a consumer to receive copyrighted media in exchange for watching a selected advertisement was an abstract idea. The idea in this case is even broader and more abstract than the idea in Ultramercial : The '085 patent covers streaming content generally, not even including an additional feature such as exchanging the consumer's access to the streaming content for the consumer's viewing of an advertisement.

Affinity contends that the '085 patent

embodied a concrete technological innovation because, as of its priority date (March 28, 2000), wireless streaming of media was not “routine, conventional, or well-known.” The patent, however, does not disclose any particular mechanism for wirelessly streaming content to a handheld device. The specification describes the function of streaming content to a wireless device, but not a specific means for performing that function. Claim 14, in turn, recites (1) a “media managing system” that maintains a library of content, (2) a “collection of instructions” that are “operable when executed” by a handheld wireless device to request streaming delivery of the content, and (3) a “network based delivery resource” that retrieves and streams the requested content to the handheld device. At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea. See

Elec. Power Grp., LLC v. Alstom S.A. , No. 2015–1778, op. at 1356 (“[T]he essentially result-focused, functional character of claim language has been a frequent feature of claims held ineligible under § 101.”).³

In addressing the first step of the section 101 inquiry, as applied to a computer-implemented invention, it is often helpful to ask whether the claims are directed to “an improvement in the functioning of a computer,” or merely “adding conventional computer components to well-known business practices.” Enfish, LLC v. Microsoft Corp. , 822 F.3d...