Prior to the Federal Circuit’s opinion in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), software and Internet patents seemed on a relentless march towards ineligibility. The Federal Circuit’s decision in DDR Holdings tapped the brakes on this skid towards elimination, and suggested that claims to the implementation of long established economic practices on computers might survive where those claims focused on overcoming obstacles in the implementing technologies themselves.
Few decision since, however, have accepted the Federal Circuit’s invitation in DDR Holdings. For a summary of decisions addressing DDR Holdings click here. Bucking the trend, the PTAB recently added to this growing body of post-DDR cases with a decision declaring claims directed to digital rights management to be patent eligible.
In Google v. ContentGuard Holdings, Inc., CBM2015-00040, the PTAB addressed claims directed generally to a method and system for managing the transfer of rights associated with digital works. The patent purported to enable content owners to enforce their rights in digital works when later transferred to additional downstream recipients. The claimed method involved associating a digital item with a “meta-right.” This meta-right specified the rights that the initial recipient could create with respect to the content. A repository recorded these meta-rights and was used to validate their exercise. The created right included a “state variable” having a value that represents the status of these rights.
The PTAB rejected Google’s arguments that the patent was merely directed to the “longstanding commercial practice” of providing consumers with rights to an item, such as a movie or book. Instead, the PTAB found that the challenged claims required more than a simple, traditional approach to the method of sub-licensing content. The PTAB was persuaded that the claim’s recitation of meta-rights in digital form, enforceable by a repository, and the addition of a state variable used to determine the status of the created right, all served to render the claims more than an abstract idea. Relying upon DDR Holdings, the PTAB determined that the claims were directed to a particular way of creating and enforcing rights associated with digital works that was “necessarily rooted in computer technology.” Due to the use of a “repository” to enforce these restrictions, the PTAB further concluded that the claims were specific enough not to preempt other ways of ensuring an owner of a digital work could enforce its rights.
Interestingly, the PTAB’s decision omitted any mention of the Federal Circuits’ decision in Ultramercial, Inc. v. Hulu LLC, 722 F. 3d 1335 (Fed. Cir. 2014) where the Federal Circuit declared a method of permitting access to digital content unpatentable. There, however, the patent claims generally lacked any specific description of unique functioning of the computer systems. Also, in contrast, ContentGuard’s patents directed to protection of digital content dealt with a problem that was seen as “necessarily rooted” in computer technology itself, without corollary outside that realm.
The key take-away from these post-DDR Holdings decisions is that clams directed to implementing established practices using a computer are most likely to survive scrutiny if they are framed not as steps of the practice, but as precise operations of the computer. Even more likely to survive are those computer-implemented methods directed to solutions to problems arising from the very use of computers to accomplish the otherwise conventional practice.