Intellectual Ventures I LLC v. Symantec Corp.

United States Court of Appeals

for the Federal Circuit

______________________

INTELLECTUAL VENTURES I LLC,

Plaintiff-Appellant

v.

SYMANTEC CORP.,

Defendant-Cross-Appellant

TREND MICRO INCORPORATED, TREND MICRO,

INC. (USA),

Defendants-Appellees

______________________

2015-1769, 2015-1770, 2015-1771

______________________

Appeals from the United States District Court for the

District of Delaware in Nos. 1:10-cv-01067-LPS, 1:12-cv-

01581-LPS, Chief Judge Leonard P. Stark.

______________________

Decided: September 30, 2016

______________________

ERIC F. CITRON, Goldstein & Russell, P.C., Bethesda,

MD, argued for plaintiff-appellant. Also represented by

THOMAS GOLDSTEIN; BROOKE ASHLEY MAY TAYLOR,

PARKER C. FOLSE III, Susman Godfrey L.L.P., Seattle,

WA; RICHARD W. HESS, JOHN PIERRE LAHAD, Houston, TX.

DOUGLAS ETHAN LUMISH, Latham & Watkins LLP,

Menlo Park, CA, argued for defendant-cross appellant.

2 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

Also represented by JEFFREY G. HOMRIG; DEAN G.

DUNLAVEY, Costa Mesa, CA; GABRIEL BELL, ROBERT J.

GAJARSA, Washington, DC.

YAR ROMAN CHAIKOVSKY, Paul Hastings LLP, Palo Al-

to, CA, argued for defendants-appellees. Also represented

by DARYL STUART BARTOW, BRYAN KEITH JAMES; BLAIR

MARTIN JACOBS, Washington, DC.

JAY P. KESAN, University of Illinois, College of Law,

Champaign, IL, for amici curiae Jay P. Kesan, Shubha

Ghosh, Richard Gruner, Carol M. Hayes, Adam Mossoff,

Kristen Osenga, Michael Risch, Mark F. Schultz, Ted

Sichelman.

______________________

Before DYK, MAYER, and STOLL, Circuit Judges.

Opinion for the court filed by Circuit Judge DYK.

Concurring opinion filed by Circuit Judge MAYER.

Opinion dissenting-in-part filed by Circuit Judge STOLL.

DYK, Circuit Judge.

Intellectual Ventures I LLC (“IV”) sued Symantec

Corp. and Trend Micro 1 (together, “appellees” or “defend-

ants”) for infringement of various claims of U.S. Patent

Nos. 6,460,050 (“the ’050 patent”), 6,073,142 (“the ’142

patent”), and 5,987,610 (“the ’610 patent”). The district

court held the asserted claims of the ’050 patent and the

’142 patent to be ineligible under § 101, and the asserted

claim of the ’610 patent to be eligible. We affirm as to the

1 We refer to Trend Micro Incorporated and Trend

Micro, Inc. (USA) together as a singular defendant “Trend

Micro.”

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 3

asserted claims of the ’050 patent and ’142 patent, and

reverse as to the asserted claim of the ’610 patent.

BACKGROUND

I

IV owns the three patents at issue: the ’050 patent,

the ’142 patent, and the ’610 patent. IV sued Symantec

and Trend Micro, two developers of anti-malware and

anti-spam software, for infringement of various claims of

those patents. Against Symantec, IV asserted claims 9,

16, and 22 of the ’050 patent; claims 1, 7, 21, and 22 of the

’142 patent; and claim 7 of the ’610 patent. Against Trend

Micro, IV asserted claims 9, 13, 16, 22, and 24 of the ’050

patent; and claims 1, 7, 17, 21, 22, 24, and 26 of the ’142

patent.

With respect to the two defendants, a § 101 patent el-

igibility issue arose at different stages of the proceedings.

The case against Symantec went to trial. The jury found

that Symantec had not proven by clear and convincing

evidence that any asserted claims were invalid under

§§ 102 and 103. The jury found Symantec had infringed

the asserted claims of the ’142 patent and ’610 patent,

and had not infringed any asserted claims of the ’050

patent. 2 After trial, Symantec brought a motion under

Fed. R. Civ. P. 52(c) for a judgment that all the asserted

claims of the three patents-in-suit are unpatentable under

35 U.S.C. § 101, an issue not addressed in the jury ver-

dict.

The case against Trend Micro did not go to trial.

Trend Micro brought a motion for summary judgment of

2 The jury awarded $9 million for infringement of

the ’142 patent and $8 million for infringement of the ’610

patent.

4 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

invalidity under § 101 for all of the asserted claims. 3 After

Trend Motion had submitted its motion, IV withdrew its

assertion of claim 7 of the ’610 patent against Trend

Micro, the only claim of the ’610 patent asserted against

Trend Micro. Thus the motions raised issues of patent

eligibility as to the ’050 and ’142 patents with respect to

both defendants, and as to the ’610 patent only with

respect to Symantec.

II

The ’050 patent is entitled, “Distributed Content Iden-

tification System.” The patent application was filed on

December 22, 1999, and the ’050 patent issued on October

1, 2002. The patent is directed to methods of screening

emails and other data files for unwanted content.

The ’142 patent is entitled, “Automated Post Office

Based Rule Analysis of E-Mail Messages and Other Data

Objects for Controlled Distribution in Network Environ-

ments.” The patent application was filed on June 23,

1997, and the ’142 patent issued on June 6, 2000. The

patent is directed to methods of routing e-mail messages

based on specified criteria (i.e., rules).

The ’610 patent is entitled, “Computer Virus Screen-

ing Methods and Systems.” The patent application was

filed on February 12, 1998, and the patent issued on

November 16, 1999. The patent is directed to using com-

puter virus screening in the telephone network.

In both cases the district court determined that the

asserted claims of the ’050 patent and ’142 patent claimed

3 While Trend Motion did not state under which

rule it brought its motion, the district court applied the

Fed. R. Civ. P. 56 summary judgment standard, and the

parties did not dispute the application of that standard.

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 5

ineligible subject matter under 35 U.S.C. § 101, and

granted appellees’ motions with respect to those patents.

The district court held, however, that Symantec had failed

to establish that the asserted claim of the ’610 patent is

patent-ineligible under § 101, and denied Symantec’s

motion with respect to that patent.

Final judgment was entered in favor of Symantec and

Trend Micro that the asserted claims of the ’050 and ’142

patents are patent-ineligible under 35 U.S.C. § 101. Id.

See Final Judgment Following Jury Trial (“Symantec

Final Judgment”), Intellectual Ventures I LLC v. Syman-

tec Corp., No. 10-cv-1067-LPS (D. Del. March 24, 2016),

ECF No. 770 at 2; 4 Judgment, Intellectual Ventures I LLC

v. Trend Micro Inc., No. 12-cv-1581-LPS (D. Del. June 17,

2015), ECF No. 234 at 2. This resolved all claims against

Trend Micro. With respect to Symantec, the district court

entered final judgment in favor of IV that Symantec

infringed claim 7 of the ’610 patent with damages in the

amount of $8 million, and that claim 7 was also not

proved invalid by Symantec under 35 U.S.C. §§ 102 or

103, or patent-ineligible under § 101. See Symantec Final

Judgment at 2.

IV now appeals the district court’s ineligibility deter-

minations with respect to the ’050 patent and ’142 patent

as to Symantec and Trend Micro, and Symantec cross-

appeals the determination of eligibility for the ’610 pa-

tent. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

4 The entry of final judgment ripened Symantec’s

cross-appeal. See Pause Tech. LLC v. TiVo Inc., 401 F.3d

1290, 1295 (Fed. Cir. 2005).

6 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

DISCUSSION

I

We review the grant or denial of summary judgment

de novo. See Nicini v. Morra, 212 F.3d 798, 805 (3d Cir.

2000) (en banc). For the district court’s entry of judgment

under Rule 52(c), we review the district court’s factual

findings for clear error and its legal conclusions de novo.

See EBC, Inc. v. Clark Bldg. Sys., Inc., 618 F.3d 253, 273

(3d Cir. 2010). Patent eligibility under § 101 is an issue of

law which we review de novo. See OIP Techs., Inc. v.

Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015).

II

Section 101 of title 35 defines patent-eligible subject

matter. It provides, “[w]hoever invents or discovers any

new and useful process, machine, manufacture, or compo-

sition of matter, or any new and useful improvement

thereof, may obtain a patent therefor . . . .” 35 U.S.C.

§ 101. For over 150 years, the Supreme Court has recog-

nized an implicit exception to these broad categories

encompassing “[l]aws of nature, natural phenomena, and

abstract ideas[, which] are not patentable.” Mayo Collabo-

rative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289,

1293 (2012) (citation and internal quotation marks omit-

ted); see also Bilski v. Kappos, 561 U.S. 593, 601–02

(2010).

In Mayo and in Alice, the Court set forth a framework

for “distinguishing patents that claim laws of nature,

natural phenomena, and abstract ideas from those that

claim patent-eligible applications of those concepts.” Alice

Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355

(2014). At Mayo/Alice step one, a court must “determine

whether the claims at issue are directed to one of those

patent-ineligible concepts.” Id. The category of abstract

ideas embraces “fundamental economic practice[s] long

prevalent in our system of commerce,” id. at 2356 (quot-

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 7

ing Bilski, 561 U.S. at 611), including “longstanding

commercial practice[s]” and “method[s] of organizing

human activity,” id. But the category of abstract ideas is

not limited to economic or commercial practices or meth-

ods of organizing human activity. See infra note 5.

If a claim is directed to a patent-ineligible concept, the

court must proceed to Mayo/Alice step two, and ask,

“what else is there in the claims before us?” Alice, 134 S.

Ct. at 2355 (citation and internal quotation citation

omitted). Step two is “a search for an inventive concept—

i.e., an element or combination of elements that is suffi-

cient to ensure that the patent in practice amounts to

significantly more than a patent upon the ineligible

concept itself.” Id. (citation and internal quotation marks

omitted).

At Mayo/Alice step two, the search is for “an in-

ventive concept sufficient to transform the claimed ab-

stract idea into a patent-eligible application.” Id. at 2357

(citation and internal quotation marks omitted). And

“[s]imply appending conventional steps, specified at a

high level of generality,” which are “well known in the

art” and consist of “well-understood, routine, conventional

activit[ies]” previously engaged in by workers in the field,

is not sufficient to supply the inventive concept. Id. at

2357, 2359 (citations and internal quotation marks omit-

ted).

1. THE ’050 PATENT

The district court held patent-ineligible the asserted

claims of the ’050 patent—claims 9, 13, 16, 22, and 24—

directed to filtering e-mails that have unwanted content.

We agree with the district court. The parties agree that

independent claim 9 is representative. It recites:

9. A method for identifying characteristics of data

files, comprising:

8 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

receiving, on a processing system, file content

identifiers for data files from a plurality of file

content identifier generator agents, each agent

provided on a source system and creating file con-

tent IDs using a mathematical algorithm, via a

network;

determining, on the processing system, whether

each received content identifier matches a charac-

teristic of other identifiers; and

outputting, to at least one of the source systems

responsive to a request from said source system,

an indication of the characteristic of the data file

based on said step of determining.

’050 patent, col. 8, ll. 13–26. According to IV, this method

of filtering emails is used to address the problems of spam

e-mail and the use of e-mail to deliver computer viruses.

We agree with the district court that receiving e-mail

(and other data file) identifiers, characterizing e-mail

based on the identifiers, and communicating the charac-

terization—in other words, filtering files/e-mail—is an

abstract idea.

The Supreme Court has held that “fundamental . . .

practice[s] long prevalent” are abstract ideas. Alice, 134 S.

Ct. at 2356. The Supreme Court and we have held that a

wide variety of well-known and other activities constitute

abstract ideas. 5

5 See, e.g., Bilski, 561 U.S. at 611 (claims directed to

risk hedging); Alice, 134 S. Ct. at 2356 (claims directed to

idea of intermediated settlement); In re TLI Commc’ns

LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)

(claims directed to classifying a digital image and storing

the image based on its classification); Mortg. Grader, Inc.

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 9

v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed.

Cir. 2016) (claims drawn to well-known idea of anony-

mous loan shopping); Versata Dev. Grp., Inc. v. SAP Am.,

Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015) (claims directed

to idea of determining a price using organizational and

product group hierarchies); Internet Patents Corp. v.

Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)

(claims directed to idea of retaining information in the

navigation of online forms); OIP Techs., 788 F.3d at 1362–

63 (claims directed to offer-based price optimization);

Content Extraction & Transmission LLC v. Wells Fargo

Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)

(claims directed to the idea of collecting data, recognizing

certain data within the collected data set, and storing that

recognized data in a memory); Ultramercial, Inc. v. Hulu

LLC, 772 F.3d 709, 714–15 (Fed. Cir. 2014) (claims di-

rected to displaying an advertisement in exchange for

access to copyrighted media); buySAFE, Inc. v. Google,

Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claim directed

toward guaranteeing a party’s performance in a transac-

tion); Accenture Global Servs., GmbH v. Guidewire Soft-

ware, Inc., 728 F.3d 1336, 1342 (Fed. Cir. 2013) (claims

directed to automated methods for generating task

lists); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333

(Fed. Cir. 2012) (claims directed to processing information

through a clearinghouse); CyberSource Corp. v. Retail

Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.

2011) (claims directed to a method for verifying the validi-

ty of a credit card transaction). See also McRO, Inc. v.

Bandai Namco Games Am. Inc., No. 2015-1080, 2016 WL

4896481, at *8–10 (claims “focused on a specific asserted

improvement in computer animation, i.e., the automatic

use of rules of a particular type” held not to be directed to

ineligible subject matter).

10 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

Here, it was long-prevalent practice for people receiv-

ing paper mail to look at an envelope and discard certain

letters, without opening them, from sources from which

they did not wish to receive mail based on characteristics

of the mail. 6 The list of relevant characteristics could be

kept in a person’s head. Characterizing e-mail based on a

known list of identifiers is no less abstract. The patent

merely applies a well-known idea using generic computers

“to the particular technological environment of the Inter-

net.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d

1245, 1259 (Fed. Cir. 2014).

The asserted claims of the ’050 patent also resemble

claims we have held were directed to an abstract idea.

Recently, in BASCOM Global Internet Services, Inc. v.

AT&T Mobility LLC, we held that a claim to a “content

filtering system for filtering content retrieved from an

Internet computer network[, e.g., to prevent users from

accessing certain websites] . . . is [directed to] an abstract

idea.” 827 F.3d 1341, 1348 (Fed. Cir. 2016). 7 And in

Content Extraction, 776 F.3d at 1347, cert. denied, 136 S.

Ct. 119 (2015), we found that the asserted patents were

“drawn to the abstract idea of 1) collecting data, 2) recog-

6 For example, it is common for “an occupant who

receives generically addressed mail [to] discard it as junk

mail.” Jones v. Flowers, 547 U.S. 220, 248 (2006) (Thom-

as, J., dissenting).

7 In BASCOM, we found the claims patent-eligible

because, at step two, the patent claimed “a technology-

based solution (not an abstract-idea-based solution im-

plemented with generic technical components in a conven-

tional way) to filter content on the Internet that

overcomes existing problems with other Internet filtering

systems.” 827 F.3d at 1351.

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 11

nizing certain data within the collected data set, and 3)

storing that recognized data in a memory.”

Because we hold the asserted claims of the ’050 patent

are directed to an abstract idea, we proceed to Mayo/Alice

step two to determine whether the claims contain an

“inventive concept” that renders them patent-eligible.

Claims that “amount to nothing significantly more than

an instruction to apply [an] abstract idea . . . using some

unspecified, generic computer” and in which “each step

does no more than require a generic computer to perform

generic computer functions” do not make an abstract idea

patent-eligible, Alice, 134 S. Ct. at 2359–60 (citations and

internal quotation marks omitted), because “claiming the

improved speed or efficiency inherent with applying the

abstract idea on a computer” does not “provide a sufficient

inventive concept.” Intellectual Ventures I LLC v. Capital

One Bank (USA) (“Intellectual Ventures v. Capital One

Bank”), 792 F.3d 1363, 1367 (Fed. Cir. 2015).

IV argues that the jury verdict determined that Sy-

mantec’s proffered prior art did not anticipate or render

obvious the asserted claims of the ’050 patent, and that

the jury’s anticipation and obviousness determination is

inconsistent with a determination that the claims are

patent-ineligible. While the claims may not have been

anticipated or obvious because the prior art did not dis-

close “determining . . . whether each received content

identifier matches a characteristic” or “outputting . . . an

indication of the characteristic of the data file,” that does

not suggest that the idea of “determining” and “output-

ting” is not abstract, much less that its implementation is

not routine and conventional.

Indeed, “[t]he ‘novelty’ of any element or steps in a

process, or even of the process itself, is of no relevance in

determining whether the subject matter of a claim falls

within the § 101 categories of possibly patentable subject

matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981)

12 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

(emphasis added); see also Mayo, 132 S. Ct. at 1303–04

(rejecting “the Government’s invitation to substitute

§§ 102, 103, and 112 inquiries for the better established

inquiry under § 101”). 8 Here, the jury’s general finding

that Symantec did not prove by clear and convincing

evidence that three particular prior art references do not

disclose all the limitations of or render obvious the assert-

ed claims does not resolve the question of whether the

claims embody an inventive concept at the second step of

Mayo/Alice.

The steps of the asserted claims of the ’050 patent do

not “improve the functioning of the computer itself,” Alice,

134 S. Ct. at 2359, for example by disclosing an “im-

proved, particularized method of digital data compres-

sion,” DDR Holdings, 773 F.3d at 1259, or by improving

“the way a computer stores and retrieves data in

memory,” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,

1339 (Fed. Cir. 2016). Rather, these claims use generic

computers to perform generic computer functions.

In Intellectual Ventures v. Capital One Bank, we

found abstract an Internet-based method for “tracking

financial transactions to determine whether they exceed a

pre-set spending limit (i.e., budgeting).” 792 F.3d at 1367.

The fact that “the claims recite[d] budgeting using a

‘communication medium’ (broadly including the Internet

and telephone networks), . . . [did] not render the claims

any less abstract.” Id. We also found abstract claims

8 See also Parker v. Flook, 437 U.S. 584, 588 (1978)

(“This case turns entirely on the proper construction of

§ 101 . . . . It does not involve the familiar issues of novel-

ty and obviousness that routinely arise under §§ 102 and

103 when the validity of a patent is challenged. For the

purpose of our analysis, we assume that respondent’s

formula is novel and useful and that he discovered it.”).

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 13

related to “customizing [website] information based on (1)

information known about the user and (2) navigation

data,” and similarly held that “a generic web server with

attendant software . . . ‘tasked with tailoring information

and providing it to the user’ provides no additional limita-

tion beyond applying an abstract idea, restricted to the

Internet, on a generic computer.” Id. at 1370–71.

The claims here are also distinguishable from those in

BASCOM, which allegedly improved an existing techno-

logical process by describing “how [a] particular arrange-

ment of elements is a technical improvement over prior

art ways of filtering [Internet] content,” i.e., “a filter

implementation versatile enough that it could be adapted

to many different users’ preferences while also installed

remotely in a single location.” 827 F.3d at 1350. There is

not, in the ’050 patent, any “specific or limiting recitation

of . . . improved computer technology,” CLS Bank Int’l v.

Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013)

(en banc) (Lourie, J., concurring), as the asserted claims

describe only generic computer elements.

Finally, IV argues that the ’050 patent “shrink[s] the

protection gap and moot[s] the volume problem.” IV’s

Opening Br. at 14. According to IV, the protection gap is

“the period of time between identification of a computer

virus by an anti-malware provider and distribution of that

knowledge to its users.” Id. at 10. The volume problem is

the “exponential growth in malware and spam,” increas-

ing the amount of antivirus signatures to be downloaded.

Id. at 12–13. However, the asserted claims do not contain

any limitations that address the protection gap or volume

problem, e.g., by requiring automatic updates to the

antivirus or antispam software or the ability to deal with

a large volume of such software. We have explained that,

“for a perceived abstract idea, if the claim ‘contains an

“inventive concept” sufficient to “transform” the claimed

abstract idea into a patent-eligible application,’ then the

claims pass the test of eligibility under section 101.”

14 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

Internet Patents Corp., 790 F.3d at 1347 (emphasis added)

(quoting Alice, 134 S. Ct. at 2357). But when a claim

directed to an abstract idea “contains no restriction on

how the result is accomplished . . . [and] [t]he mechanism

. . . is not described, although this is stated to be the

essential innovation[,]” id. at 1348, then the claim is not

patent-eligible.

The asserted claims of the ’050 patent are not patent-

eligible under § 101.

2. THE ’142 PATENT

The district court held ineligible claims 1, 7, 17, 22,

24, and 26 of the ’142 patent, which relate to systems and

methods for receiving, screening, and distributing e-mail,

and we agree. According to IV, claim 1 is representative of

how the ’142 patent screens e-mail, 9 and recites:

1. A post office for receiving and redistributing e-

mail messages on a computer network, the post

office comprising:

a receipt mechanism that receives an e-mail mes-

sage from a sender, the e-mail message having at

least one specified recipient;

9 Defendants agree, and IV does not dispute, that

“[a]ll of the claims are substantially similar and no party

claims that they differ in any manner relevant” to the

§ 101 analysis. Opening Br. of Cross-Appellant Symantec

Corp. at 10. We focus on claim 1 of the ’142 patent, which

IV states is representative. Addressing each of the assert-

ed claims is unnecessary when “all the claims are sub-

stantially similar and linked to the same abstract idea.”

Content Extraction, 776 F.3d at 1348 (internal quotation

marks and citation omitted).

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 15

a database of business rules, each business rule

specifying an action for controlling the delivery of

an e-mail message as a function of an attribute of

the e-mail message;

a rule engine coupled to receive an e-mail message

from the receipt mechanism and coupled to the

database to selectively apply the business rules to

the e-mail message to determine from selected

ones of the business rules a set of actions to be

applied to the e-mail message; and

a distribution mechanism coupled to receive the

set of actions from the rule engine and apply at

least one action thereof to the e-mail message to

control delivery of the e-mail message and which

in response to the rule engine applying an action

of deferring delivery of the e-mail message, the

distribution engine automatically combines the e-

mail message with a new distribution list specify-

ing at least one destination post office for receiv-

ing the e-mail message for review by an

administrator associated with the destination post

office, and a rule history specifying the business

rules that were determined to be applicable to the

e-mail message by at least one rule engine, and

automatically delivers the e-mail message to a

first destination post office on the distribution list

instead of a specified recipient of the e-mail mes-

sage.

’142 patent, col. 27, ll. 2–32.

The written description is particularly useful in de-

termining what is well-known or conventional. See, e.g.,

Internet Patents Corp., 790 F.3d at 1348. The ’142 patent’s

abstract describes the invention as “[a] system, method

and various software products . . . for automatic deferral

and review of e-mail messages and other data objects in a

networked computer system, by applying business rules

16 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

to the messages as they are processed by post offices.”

’142 patent, Abstract. Claim 1 also describes the patented

system as a “post office”—albeit an electronic one. ’142

patent, col. 27, ll. 2. The district court held that “the

asserted claims of the ’142 patent are directed to human-

practicable concepts, which could be implemented in, for

example, a brick-and-mortar post office.” J.A. 35.

We agree, and think the district court’s analogy to a

corporate mailroom is also useful. Such mailrooms receive

correspondence, keep business rules defining actions to be

taken regarding correspondence based on attributes of the

correspondence, apply those business rules to correspond-

ence, and take certain actions based on the application of

business rules. Those actions include gating the message

for further review, 10 as in claim 1, and also releasing,

deleting, returning, or forwarding the message, as de-

scribed elsewhere in the ’142 patent, see, e.g., col. 3, ll. 30–

39.

Indeed, in recounting the background of the inven-

tion, the patent states,

[m]any corporate organizations have elaborate

methods to control the flow of memorandum, pub-

lications, notices, and other printed information

within the organization. An organization may lim-

it the types of documents employees can distribute

at work, and in some cases, control which persons

within an organization communicate with each

other. . . . These various rules are typically docu-

10 The specification states, “[f]or example, a business

rule to gate an e-mail for further review may be triggered

for any e-mail message that is addressed to the president

of the company.” ’142 patent, col. 3, 45–48.

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 17

mented as part of the organization’s business

communication policies.

Id. at col. 1, ll. 15–33. Thus, the ’142 patent itself demon-

strates that the claimed systems and methods of screen-

ing messages are abstract ideas, “fundamental . . .

practice[s] long prevalent in our system” and “method[s]

of organizing human activity.” Alice, 134 S. Ct. at 2356

(citations and internal quotation marks omitted); see also

Intellectual Ventures v. Capital One Bank, 792 F.3d at

1369.

And IV itself informed the district court, in its tech-

nology tutorial, “[i]n the typical environment, the post

office resides on a mail server, where the company’s

emails are received, processed, and routed to recipients.

Conceptually, this post office is not much different than a

United States Postal Service office that processes letters

and packages, except that the process is all computer-

implemented and done electronically in a matter of sec-

onds.” J.A. 40.

This demonstrates that the concept is well-known and

abstract. Furthermore, with the exception of generic

computer-implemented steps, there is nothing in the

claims themselves that foreclose them from being per-

formed by a human, mentally or with pen and paper. See

CyberSource, 654 F.3d at 1371–72. Indeed, the specifica-

tion expressly states that one type of post office, the

gatekeeping post office, which “provides for administra-

tive review and processing of gated messages . . . provides

for both manual review by a gatekeeper—a person desig-

nated to review gated messages—and automatic review

and processing.” ’142 patent, col. 7, ll. 31–35; see also id.

at col. 11, ll. 7–10. The ’142 patent is directed to a conven-

tional business practice—the screening of messages by

corporate organizations—in the context of electronic

communications.

18 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

Since the claims are directed to an abstract idea, we

proceed to Mayo/Alice step two. According to the specifi-

cation, the claims can “operate[] on a conventional com-

munications network.” Id. at col. 5, l. 46. The post offices

are “[c]ommunicatively coupled to the network through

conventional e-mail protocols,” and “conventional mail

servers and conventional post office/mail server combina-

tions may be present.” Id. at col. 5, ll. 48–49, 55–57. The

patent discloses only generic computers performing gener-

ic functions: “[t]he [Rule Enforcing Post Offices] and

[Gatekeeping Post Offices] are preferably implemented as

software products executing on conventional server-class

computers, such as . . . IBM compatible computers based

on Intel Inc.’s Pentium™ processors. The servers operate

in conjunction with conventional operating systems, such

as UNIX™, or Microsoft Corp.’s Windows95™ or Win-

dowNT™.” Id. at col. 9, ll. 51–58. The specification thus

confirms that the implementation of the abstract idea is

routine and conventional. The ’142 patent does not “im-

prove the functioning of the computer itself.” Alice, 134 S.

Ct. at 2359 (citation omitted). Nor does it solve a “chal-

lenge particular to the Internet.” DDR Holdings, 773 F.3d

at 1257.

IV argues that the claims do not merely require rou-

tine and conventional use of computers and the Internet

because “applying business rules to email is not what

computers and the Internet do in the absence of this claim

limitation” and “because computers and the Internet do

not have ‘rule engines’ as a matter of course.” IV’s Open-

ing Br. at 54. But the inquiry is not whether conventional

computers already apply, for example, well-known busi-

ness concepts like hedging or intermediated settlement.

Rather, we determine whether “each step does no more

than require a generic computer to perform generic com-

puter functions.” Alice, 134 S. Ct. at 2359 (emphasis

added). Here that is the case.

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 19

The asserted claims of the ’142 patent are not patent-

eligible under § 101.

3. THE ’610 PATENT

Claim 7 is the only asserted claim of the ’610 patent.

The district court held eligible claim 7 of the ’610 patent.

Claim 7 depends from claim 1, which provides:

1. A virus screening method comprising the steps

of:

routing a call between a calling party and a called

party of a telephone network;

receiving, within the telephone network, computer

data from a first party selected from the group

consisting of the calling party and the called par-

ty;

detecting, within the telephone network, a virus

in the computer data; and

in response to detecting the virus, inhibiting

communication of at least a portion of the com-

puter data from the telephone network to a second

party selected from the group consisting of the

calling party and the called party.

’610 patent, col. 14, ll. 34–47. Claim 7 recites:

7. The virus screening method of claim 1 further

comprising the step of determining that virus

screening is to be applied to the call based upon at

least one of an identification code of the calling

party and an identification code of the called par-

ty.

Id. at col. 14, l. 66–col. 15 l. 3.

Unlike the asserted claims of the ’050 and ’142 pa-

tents, claim 7 involves an idea that originated in the

computer era—computer virus screening. But the idea of

20 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

virus screening was nonetheless well known when the

’610 patent was filed. Performing virus screening was a

long prevalent practice in the field of computers, and, as

the patent admits, performed by many computer users.

The patent acknowledges that, prior to the invention,

“[m]any computer users [had] virus screening and detec-

tion software installed on their computers.” Id. at col. 1, ll.

10–11. Claim 7 of the ’610 patent, however, does not claim

a new method of virus screening or improvements there-

to—in fact, it requires only “detecting . . . a virus in the

computer data.” Id. at col. 14, ll. 40–41. The specification

recites conventional “virus screening software.” See, e.g.,

’610 patent, col. 3, ll. 35–39. By itself, virus screening is

well-known and constitutes an abstract idea.

At step two of Mayo/Alice, there is no other aspect of

the claim that is anything but conventional.

The ’610 patent is directed to the use of well-known

virus screening software within the telephone network 11

or the Internet. We have previously determined that

performing otherwise abstract activity on the Internet

does not save the idea from being patent-ineligible. As we

said in Intellectual Ventures v. Capitol One Bank, “[a]n

abstract idea does not become nonabstract by limiting the

invention to a particular . . . technological environment,

such as the Internet. . . . [W]hile the claims recite budget-

ing using a ‘communication medium’ (broadly including

the Internet and telephone networks), that limitation

does not render the claims any less abstract.” 792 F.3d at

1366–67. See also Ultramercial, 772 F.3d at 716 (Fed. Cir.

11 The district court construed “within the telephone

network” to mean “in the voice or data network connect-

ing the calling party and called party, exclusive of the

networks and gateway nodes of the called party and

calling party.” J.A. 276.

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 21

2014) (“The claims’ invocation of the Internet also adds no

inventive concept. As we have held, the use of the Inter-

net is not sufficient to save otherwise abstract claims from

ineligibility under § 101.”). 12

Just as performance of an abstract idea on the Inter-

net is abstract, so too the performance of an abstract

concept in the environment of the telephone network is

abstract, as Intellectual Ventures v. Capitol One Bank

recognized. Our recent decision in TLI Communications

involved a similar situation. There, we held that a chal-

lenged claim was “drawn to the concept of classifying an

image and storing the image based on its classification.”

823 F.3d at 611. This was abstract because “[w]hile the

[asserted claim] requires concrete, tangible components

such as ‘a telephone unit’ and a ‘server,’ the specification

makes 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. Here, the recitation of a “tele-

phone network,” like the telephone unit and server in TLI

Communications, merely provides a “generic environ-

ment” in which to carry out the well-known and abstract

idea of virus screening.

Nor does the asserted claim improve or change the

way a computer functions. Claim 7 recites no more than

generic computers that use generic virus screening tech-

nology. But the “mere recitation of a generic computer

cannot transform a patent-ineligible abstract idea into a

patent-eligible invention.” Alice, 134 S. Ct. at 2358. “For

12 See also, e.g., buySAFE, 765 F.3d at 1355 (“The

computers in Alice were receiving and sending infor-

mation over networks connecting the intermediary to the

other institutions involved, and the Court found the

claimed role of the computers insufficient.”).

22 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

the role of a computer in a computer-implemented inven-

tion to be deemed meaningful in the context of this analy-

sis, it must involve more than performance of ‘well-

understood, routine, [and] conventional activities previ-

ously known to the industry.’” Content Extraction, 776

F.3d at 1347–48 (quoting Alice, 134 S. Ct. at 2359).

As the district court determined, claim 7 calls for at

least three computers: the computer of the first party or

sending party, the virus screening computer, and the

computer of the second or receiving party. The sending

and receiving computers can be generic—they perform

only sending and receiving functions. See buySAFE, 765

F.3d at 1352, 1355. The virus screening computer fares no

better. According to the specification, “[v]irus screening

can be facilitated in the telephone network using either a

conventional telephone network processor adapted to run

associated virus screening software or an additional

processor which runs virus screening software. . . . The

processor can augment conventional circuit-switched

network elements . . . .” ’610 patent, col. 3, ll. 35–39, 49–

50 (emphasis added). “As is well known, each of the virus-

screening processors can have one or more associated

modems to modulate computer data for transmission, and

to demodulate received computer data.” Id. at col. 4, ll.

58–61. There is no indication that the virus screening

software installed on a conventional telephone network

processor is any different than the virus screening soft-

ware “[m]any computer users have . . . installed on their

computers.” Id. at col. 1, ll. 10–11. These “generic comput-

er components [are] insufficient to add an inventive

concept to an otherwise abstract idea.” TLI Commc’ns,

823 F.3d at 614.

IV argues that “[t]he claims of the ’610 Patent include

meaningful limitations that narrow the claimed invention

to a specific way of screening for computer viruses within

the telephone network . . . and does not preempt all virus

detection.” IV’s Response and Reply Br. at 55. A narrow

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 23

claim directed to an abstract idea, however, is not neces-

sarily patent-eligible, for “[w]hile preemption may signal

patent ineligible subject matter, the absence of complete

preemption does not demonstrate patent eligibility.”

Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,

1379 (Fed. Cir. 2015); see also OIP Techs., 788 F.3d at

1362–63 (“[T]hat the claims do not preempt all price

optimization or may be limited to price optimization in

the e-commerce setting do not make them any less ab-

stract.”).

In summary, unlike the claims at issue in Enfish,

which involved a “specific type of data structure designed

to improve the way a computer stores and retrieves data

in memory,” 822 F.3d at 1339, claim 7 of the ’610 patent

does not improve or change the way a computer functions.

Nor does claim 7 overcome a problem unique to the Inter-

net as was the case in DDR Holdings. 773 F.3d at 1258–

59.

Citing BASCOM, the dissent argues that “claim 7

constitutes an improvement of the network itself and,

thus, focuses on improving computers as tools.” Dissent-

ing Op. at 5. Contrary to the dissent, this case is unlike

BASCOM, where, “[o]n [a] limited record” and when

viewed in favor of the patentee, the claims alleged a

“technical improvement over prior art ways of filtering

[Internet] content.” 827 F.3d at 1350. The patent in

BASCOM did not merely move existing content filtering

technology from local computers to the Internet, 13 which

“would not contain an inventive concept,” but

“overc[a]me[] existing problems with other Internet

13 Indeed, in BASCOM, the patent specification

acknowledged that several prior art systems already

performed content filtering at either local or remote

servers. See 827 F.3d at 1344.

24 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

filtering systems”—i.e., it solved the problem of “inflexible

one-size-fits-all” remote filtering schemes (caused by

simply moving filtering technology to the Internet) by

enabling individualized filtering at the ISP server. Id at

1350–51. In other words, the patent in BASCOM did not

purport to improve the Internet itself by introducing prior

art filtering technology to the Internet. Rather, the

BASCOM patent fixed a problem presented by combining

the two. Here the record does not indicate that claim 7

recites any improvement to conventional virus screening

software, nor does claim 7 solve any problem associated

with situating such virus screening on the telephone

network.

The dissent nonetheless urges that there are two ad-

vantages to using virus screening on the telephone net-

work that qualify as inventive concepts: (1) shifting virus

detection away from the networks of the sender and

recipient, which allows users to communicate over a

network without concern of receiving computer viruses;

and (2) closing the “protection gap,” i.e., the problem of

individual computer users having to periodically update

their virus screening software. Dissenting Op. at 2.

Regarding shifting virus detection to the telephone

network, the claimed inventive solution of claim 7 is to

utilize an intermediary computer in forwarding infor-

mation. But that solution is perfectly conventional and is

applied any time an e-mail recipient performs virus

screening and, acting as an intermediary, forwards the e-

mail to another recipient. As discussed above, there is no

claim here describing a particular method of incorporat-

ing virus screening into the Internet. 14 To be sure, it may

14 See Affinity Labs of Tex., LLC v. DirecTV, LLC,

No. 2015-1845 (Fed. Cir. Sept. 23, 2016), slip op. at 16

(holding patent ineligible where it “d[id] not provide an

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 25

be that other claims that recite particular features of

intermediate computers (e.g., modeling to match the

recipient’s computer architecture) incorporate an in-

ventive concept, but those claims are not before us.

As to the protection gap, claim 7 of the ’610 patent

does not describe or require a solution to the protection

gap. See supra at 13–14 (explaining that the language of

the challenged claims of the ’050 patent do not address

the protection gap). The district court erred in relying on

technological details set forth in the patent’s specification

and not set forth in the claims to find an inventive con-

cept. See Accenture, 728 F.3d at 1345 (“[T]he complexity of

the implementing software or the level of detail in the

specification does not transform a claim reciting only an

abstract concept into a patent-eligible system or meth-

od.”); Content Extraction, 776 F.3d at 1346 (“We focus

here on whether the claims of the asserted patents fall

within the excluded category of abstract ideas.”) (empha-

sis added).

As we explained in TLI Communications, the claim

here is “not directed to a specific improvement to comput-

er functionality. Rather, [it is] 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.” 823 F.3d at 612

Claim 7 of the ’610 patent is not patent-eligible under

§ 101.

inventive solution to a problem in implementing the idea

of remote delivery of regional broadcasting; it simply

recite[d] that the abstract idea of remote delivery will be

implemented using the conventional components and

functions generic to cellular telephones.”).

26 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

AFFIRMED-IN-PART AND REVERSED-IN-PART

COSTS

Costs to defendants.

United States Court of Appeals

for the Federal Circuit

______________________

INTELLECTUAL VENTURES I LLC,

Plaintiff-Appellant

v.

SYMANTEC CORP.,

Defendant-Cross-Appellant

TREND MICRO INCORPORATED, TREND MICRO,

INC. (USA),

Defendants-Appellees

______________________

2015-1769, 2015-1770, 2015-1771

______________________

Appeals from the United States District Court for the

District of Delaware in Nos. 1:10-cv-01067-LPS, 1:12-cv-

01581-LPS, Chief Judge Leonard P. Stark.

______________________

MAYER, Circuit Judge, concurring.

I agree that all claims on appeal fall outside of 35

U.S.C. § 101. I write separately, however, to make two

points: (1) patents constricting the essential channels of

online communication run afoul of the First Amendment;

and (2) claims directed to software implemented on a

generic computer are categorically not eligible for patent.

2 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

I.

“[T]he Constitution protects the right to receive in-

formation and ideas. . . . This right to receive information

and ideas, regardless of their social worth, is fundamental

to our free society.” Stanley v. Georgia, 394 U.S. 557, 564

(1969) (citations omitted). Patents, which function as

government-sanctioned monopolies, invade core First

Amendment rights when they are allowed to obstruct the

essential channels of scientific, economic, and political

discourse. See United States v. Playboy Entm’t Grp., Inc.,

529 U.S. 803, 812 (2000) (“The distinction between laws

burdening and laws banning speech is but a matter of

degree.”); see also In re Tam, 808 F.3d 1321, 1340 (Fed.

Cir. 2015) (en banc) (explaining that the government may

impermissibly burden speech “even when it does so indi-

rectly”).

Although the claims at issue here disclose no new

technology, they have the potential to disrupt, or even

derail, large swaths of online communication. U.S. Patent

No. 6,460,050 (the “’050 patent”) purports to cover meth-

ods of “identifying characteristics of data files,” ’050

patent, col. 8 l. 13, whereas U.S. Patent No. 6,073,142 (the

“’142 patent”) broadly claims systems and methods which

allow an organization to control internal email distribu-

tion, ’142 patent, col. 1 ll. 15–34. U.S. Patent No.

5,987,610 (the “’610 patent”) describes, in sweeping terms,

screening a communication for viruses or other harmful

content at an intermediary location before delivering it to

an addressee. See ’610 patent, col. 14 ll. 34–47. The

asserted claims speak in vague, functional language,

giving them the elasticity to reach a significant slice of all

email traffic. See Gottschalk v. Benson, 409 U.S. 63, 69

(1972) (“Benson”) (explaining that claims are patent

eligible only if they contain limitations “sufficiently defi-

nite to confine the patent monopoly within rather definite

bounds”). Indeed, the claims of the ’610 patent could

reasonably be read to cover most methods of screening for

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 3

harmful content while data is being transmitted over a

network. See ’610 patent, col. 1 ll. 59–61 (describing

“screen[ing] computer data for viruses within a telephone

network before communicating the computer data to an

end user”).

Suppression of free speech is no less pernicious be-

cause it occurs in the digital, rather than the physical,

realm. “[W]hatever the challenges of applying the Consti-

tution to ever-advancing technology, the basic principles

of freedom of speech and the press, like the First Amend-

ment’s command, do not vary when a new and different

medium for communication appears.” Brown v. Entm’t

Merchs. Ass’n, 564 U.S. 786, 790 (2011) (citations and

internal quotation marks omitted). Essential First

Amendment freedoms are abridged when the Patent and

Trademark Office (“PTO”) is permitted to balkanize the

Internet, granting patent owners the right to exact heavy

taxes on widely-used conduits for online expression.

Like all congressional powers, the power to issue pa-

tents and copyrights is circumscribed by the First

Amendment. See Golan v. Holder, 132 S. Ct. 873, 889–93

(2012); Eldred v. Ashcroft, 537 U.S. 186, 219–21 (2003).

In the copyright context, the law has developed “built-in

First Amendment accommodations.” Eldred, 537 U.S. at

219; see also Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,

469 U.S. 189, 201 (1985) (noting that the Lanham Act

contains safeguards to prevent trademark protection from

“tak[ing] from the public domain language that is merely

descriptive”). Specifically, copyright law “distinguishes

between ideas and expression and makes only the latter

eligible for copyright protection.” Eldred, 537 U.S. at 219;

see also Harper & Row Publishers, Inc. v. Nation Enters.,

471 U.S. 539, 556 (1985) (explaining that “copyright’s

idea/expression dichotomy” supplies “a definitional bal-

ance between the First Amendment and the Copyright

Act by permitting free communication of facts while still

protecting an author’s expression” (citations and internal

4 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

quotation marks omitted)). It also applies a “fair use”

defense, permitting members of “the public to use not only

facts and ideas contained in a copyrighted work, but also

expression itself in certain circumstances.” Eldred, 537

U.S. at 219; see 17 U.S.C. § 107 (“[T]he fair use of a copy-

righted work, including such use by reproduction in copies

. . . for purposes such as criticism, comment, news report-

ing, teaching (including multiple copies for classroom

use), scholarship, or research, is not an infringement of

copyright.”).

Just as the idea/expression dichotomy and the fair use

defense serve to keep copyright protection from abridging

free speech rights, restrictions on subject matter eligibil-

ity can be used to keep patent protection within constitu-

tional bounds. Section 101 creates a “patent-free zone”

and places within it the indispensable instruments of

social, economic, and scientific endeavor. See Alice Corp.

v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (emphasiz-

ing that the “building blocks of human ingenuity” are

patent ineligible); Benson, 409 U.S. at 67 (stating that

“mental processes . . . and abstract intellectual concepts

are not patentable, as they are the basic tools of scientific

and technological work”). Online communication has

become a “basic tool[],” Benson, 409 U.S. at 67, of modern

life, driving innovation and supplying a widely-used

platform for political dialogue. See Ultramercial, Inc. v.

Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (noting

that the Internet “is a ubiquitous information-

transmitting medium”); see also U.S. Telecom Ass’n v.

Fed. Commc’n Comm’n, 825 F.3d 674, 698 (D.C. Cir. 2016)

(explaining that online communication “has transformed

nearly every aspect of our lives, from profound actions

like choosing a leader, building a career, and falling in

love to more quotidian ones like hailing a cab and watch-

ing a movie”). Section 101, if properly applied, can pre-

serve the Internet’s open architecture and weed out those

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 5

patents that chill political expression and impermissibly

obstruct the marketplace of ideas.

As both the Supreme Court and this court have rec-

ognized, section 101 imposes “a threshold test,” Bilski v.

Kappos, 561 U.S. 593, 602 (2010), one that must be satis-

fied before a court can proceed to consider subordinate

validity issues such as non-obviousness under 35 U.S.C.

§ 103 or adequate written description under 35 U.S.C.

§ 112. See Parker v. Flook, 437 U.S. 584, 593 (1978)

(“Flook”) (“The obligation to determine what type of

discovery is sought to be patented” so as to determine

whether it falls within the ambit of section 101 “must

precede the determination of whether that discovery is, in

fact, new or obvious.”); In re Comiskey, 554 F.3d 967, 973

(Fed. Cir. 2009) (“Only if the requirements of § 101 are

satisfied is the inventor allowed to pass through to the

other requirements for patentability, such as novelty

under § 102 and . . . non-obviousness under § 103.” (cita-

tions and internal quotation marks omitted)); State St.

Bank & Trust Co. v. Signature Fin. Grp., Inc., 149 F.3d

1368, 1372 n.2 (Fed. Cir. 1998) (explaining that section

101 is “[t]he first door which must be opened on the

difficult path to patentability” (citations and internal

quotation marks omitted)). Indeed, if claimed subject

matter is not even eligible for patent protection, any

pronouncement on whether it is novel or adequately

supported by the written description constitutes an im-

permissible advisory opinion. See, e.g., Golden v. Zwick-

ler, 394 U.S. 103, 108 (1969) (emphasizing that Article III

courts “do not render advisory opinions” (citations and

internal quotation marks omitted)).

The public has a “paramount interest in seeing that

patent monopolies . . . are kept within their legitimate

scope.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,

2144 (2016) (citations and internal quotation marks

omitted); see also Medtronic, Inc. v. Mirowski Family

Ventures, LLC, 134 S. Ct. 843, 851 (2014). Nowhere is

6 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

that interest more compelling than in the context of

claims that threaten fundamental First Amendment

freedoms. See Palko v. Connecticut, 302 U.S. 319, 326–27

(1937) (“[F]reedom of thought and speech . . . is the ma-

trix, the indispensable condition, of nearly every other

form of freedom.”). “As the most participatory form of

mass speech yet developed, the Internet deserves the

highest protection from governmental intrusion.” ACLU

v. Reno, 929 F. Supp. 824, 883 (E.D. Pa. 1996), aff’d, 521

U.S. 844 (1997). A robust application of section 101 at the

outset of litigation will ensure that the essential channels

of online communication remain “free to all men and

reserved exclusively to none,” Funk Brothers Seed Co. v.

Kalo Inoculant Co., 333 U.S. 127, 130 (1948).

II.

Most of the First Amendment concerns associated

with patent protection could be avoided if this court were

willing to acknowledge that Alice sounded the death knell

for software patents. The claims at issue in Alice were

directed to a computer-implemented system for mitigating

settlement risk. 134 S. Ct. at 2352–53. Although the

petitioners argued that their claims were patent eligible

because they were tied to a computer and a computer is a

tangible object, the Supreme Court unanimously and

emphatically rejected this argument. Id. at 2358–60. The

Court explained that the “mere recitation of a generic

computer cannot transform a patent-ineligible abstract

idea into a patent-eligible invention.” Id. at 2358. Ac-

cordingly, “[t]he fact that a computer necessarily exist[s]

in the physical, rather than purely conceptual, realm is

beside the point” in the section 101 calculus. Id.

(citations and internal quotation marks omitted).

Software is a form of language—in essence, a set of

instructions. See Microsoft Corp. v. AT&T Corp., 550 U.S.

437, 447 (2007) (explaining that “software” is “the set of

instructions, known as code, that directs a computer to

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 7

perform specified functions or operations” (citations and

internal quotation marks omitted)); see also 17 U.S.C.

§ 101 (defining a “‘computer program,’” for purposes of the

Copyright Act, as “a set of statements or instructions to be

used directly or indirectly in a computer in order to bring

about a certain result”). It is inherently abstract because

it is merely “an idea without physical embodiment,”

Microsoft, 550 U.S. at 449 (emphasis added). Given that

an “idea” is not patentable, see, e.g., Benson, 409 U.S. at

67, and a generic computer is “beside the point” in the

eligibility analysis, Alice, 134 S. Ct. at 2358, all software

implemented on a standard computer should be deemed

categorically outside the bounds of section 101.

The central problem with affording patent protection

to generically-implemented software is that standard

computers have long been ceded to the public domain.

See Flook, 437 U.S. at 593 n.15 (“[I]n granting patent

rights, the public must not be deprived of any rights that

it theretofore freely enjoyed” (citations and internal

quotation marks omitted)). Because generic computers

are ubiquitous and indispensable, in effect the “basic

tool[],” Benson, 409 U.S. at 67, of modern life, they are not

subject to the patent monopoly. In the section 101 calcu-

lus, adding software (which is as abstract as language) to

a conventional computer (which rightfully resides in the

public domain) results in a patent eligibility score of zero.

See Alice, 134 S. Ct. at 2358 (“Stating an abstract idea

while adding the words ‘apply it with a computer’ simply

combines those two steps, with the same deficient re-

sult.”).

Software lies in the antechamber of patentable inven-

tion. Because generically-implemented software is an

“idea” insufficiently linked to any defining physical struc-

ture other than a standard computer, it is a precursor to

technology rather than technology itself. See Mackay

Radio & Tel. Co. v. Radio Corp., 306 U.S. 86, 94 (1939)

(“While a scientific truth, or the mathematical expression

8 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

of it, is not patentable invention, a novel and useful

structure created with the aid of knowledge of scientific

truth may be.”). It is well past time to return software to

its historical dwelling place in the domain of copyright.

See Benson, 409 U.S. at 72 (citing a report from a presi-

dential commission explaining that copyright is available

to protect software and that software development had

“undergone substantial and satisfactory growth” even

without patent protection (citations and internal quota-

tion marks omitted)); Oracle Am., Inc. v. Google Inc., 750

F.3d 1339, 1380 (Fed. Cir. 2014) (noting that “several

commentators” have “argue[d] that the complex and

expensive patent system is a terrible fit for the fast-

moving software industry” and that copyright provides

“[a] perfectly adequate means of protecting and rewarding

software developers for their ingenuity” (citations and

internal quotation marks omitted)); Peter S. Menell, An

Analysis of the Scope of Copyright Protection for Applica-

tion Programs, 41 Stan. L. Rev. 1045, 1076 (1989) (ex-

plaining that patents were historically “not seen as a

viable option for the protection of most application pro-

gram code” and that many software programs “simply do

not manifest sufficient novelty or nonobviousness to merit

patent protection”).

Software development has flourished despite—not be-

cause of—the availability of expansive patent protection.

See Brief of Amicus Curiae Elec. Frontier Found. in

Support of Respondents, Alice, 134 S. Ct. 2347 (No. 13-

298), 2014 WL 828047, at *6–7 (“EFF Brief”) (“The soft-

ware market began its rapid increase in the early 1980s

. . . more than a decade before the Federal Circuit concoct-

ed widespread software patents in 1994. . . . Obviously,

no patents were needed for software to become a $60

billion/year industry by 1994.”); Mark A. Lemley, Soft-

ware Patents and the Return of Functional Claiming,

2013 Wis. L. Rev. 905, 935 (2013) (“Software patents . . .

have created a large number of problems for the industry,

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 9

particularly for the most innovative and productive com-

panies. . . . [T]he existence of a vibrant open source

community suggests that innovation can flourish in

software absent patent protection.” (footnote omitted));

Wendy Seltzer, Software Patents and/or Software Devel-

opment, 78 Brook. L. Rev. 929, 930 (2013) (“Seltzer”)

(“Present knowledge and experience now offer sufficient

evidence that patents disserve software innovation.”); Arti

K. Rai, John R. Allison, & Bhaven N. Sampat, University

Software Ownership and Litigation: A First Examination,

87 N.C. L. Rev. 1519, 1555–56 (2009) (“While most small

biotechnology firms that receive venture financing have

patents, the available empirical evidence indicates that

most software start-ups that receive venture financing,

particularly in the first round, do not have patents.”).

From an eligibility perspective, software claims suffer

from at least four insurmountable problems. First, their

scope is generally vastly disproportionate to their techno-

logical disclosure. In assessing patent eligibility, “the

underlying functional concern . . . is a relative one: how

much future innovation is foreclosed relative to the con-

tribution of the inventor.” Mayo Collaborative Servs. v.

Prometheus Labs., Inc., 132 S. Ct. 1289, 1303 (2012); see

also Motion Picture Patents Co. v. Universal Film Mfg.

Co., 243 U.S. 502, 513 (1917) (“[T]he inventor [is entitled

to] the exclusive use of just what his inventive genius has

discovered. It is all that the statute provides shall be

given to him and it is all that he should receive, for it is

the fair as well as the statutory measure of his reward for

his contribution to the public stock of knowledge.”).

Software patents typically do not include any actual code

developed by the patentee, but instead describe, in inten-

tionally vague and broad language, a particular goal or

objective. See Dan L. Burk & Mark A. Lemley, Is Patent

Law Technology-Specific?, 17 Berkeley Tech. L. J. 1155,

1164–65 (2002) (“Unfortunately, the Federal Circuit’s

peculiar direction in the software enablement cases has

10 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

effectively nullified the disclosure requirement for soft-

ware patents. And since source code is normally kept

secret, software patentees generally disclose little or no

detail about their programs to the public.” (footnote

omitted)). Here, for example, the ’610 patent discusses

the objective of “screen[ing] computer data for viruses . . .

before communicating the computer data to an end user,”

’610 patent, col. 1 ll. 59–61, but fails to disclose any specif-

ic, inventive guidance for achieving that goal. In effect,

the ’610 patent, like most software patents, describes a

desirable destination but neglects to provide any intelligi-

ble roadmap for getting there.

A second, and related, problem with software patents

is that they provide incentives at the wrong time. Be-

cause they are typically obtained at the “idea” stage,

before any real inventive work has been done, such pa-

tents are incapable of effectively incentivizing meaningful

advances in science and technology. “A player focused on

patenting can obtain numerous patents without develop-

ing any of the technologies to useful levels of deployment

or disclosure, leaving a minefield of abstract patent claims

for others who actually deploy software.” Seltzer, 78

Brook. L. Rev. at 931. Here, for example, it took no

significant inventive effort to recognize that communica-

tions should be screened for harmful content before deliv-

ery. The hard work came later, when software developers

created screening systems capable of preventing our email

boxes from being overrun with spam or disabled by virus-

es. Granting patents on software “ideas”—before they

have been actually reduced to practice—has created a

perverse incentive scheme. Under our current regime,

those who scamper to the PTO early, often equipped with

little more than vague notions about using computers to

automate well-known business and social practices, can

reap hefty financial dividends. By contrast, those who

actually create and deploy useful computer-centric prod-

ucts are “rewarded” with mammoth potential infringe-

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 11

ment liability. See id. at 972 (“In software . . . the long

road from idea to implementation often snags on patents

early in the course. Engineers can describe what they

want software to do—in terms that have been sufficient

for the PTO—well before they have made it work. Pres-

sures to patent early produce a thicket of pre-

implementation claims.”); EFF Brief, 2014 WL 828047, at

*23 (describing a study which “found that between 2007

and 2011, 46 percent of patent lawsuits involved software

patents, accounting for 89 percent of the increase in the

number of patent defendants during this timeframe”).

Yet another intractable problem with software pa-

tents is their sheer number. See Brief Of Amici Curiae

Checkpoint Software, Inc. et al. in Support of Respond-

ents, Alice, 134 S. Ct. 2347 (No. 13-298), 2014 WL 828039,

at *8 (“[B]ecause computer products—as opposed to

patents—inevitably integrate complex, multicomponent

technology, any given product is potentially subject to a

large number of patents. . . . Some industry experts have

estimated that 250,000 patents go into a modern

smartphone.” (citations omitted)). Given the vast number

of software patents—most of which are replete with

broad, functional claims—it is virtually impossible to

innovate in any technological field without being en-

snared by the patent thicket. See id. (describing the

“overwhelming set of overlapping patent rights that

impede innovation”). Software patents impose a

deadweight loss on the nation’s economy, erecting often

insurmountable barriers to innovation and forcing com-

panies to expend exorbitant sums defending against

meritless infringement suits. See Shawn P. Miller,

“Fuzzy” Software Patent Boundaries and High Claim

Construction Reversal Rates, 17 Stan. Tech. L. Rev. 809,

810 (2014) (“Patent litigation is so expensive it has been

described as the sport of kings. . . . These expenses,

however, may be dwarfed by the social cost of patent

litigation in reducing incentives for producers to bring

12 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

innovative products to market.” (footnote and internal

quotation marks omitted)).

Fourth, and most fundamentally, generically-

implemented software invariably lacks the concrete

borders the patent law demands. See, e.g., Digital Equip.

Corp. v. AltaVista Tech., Inc., 960 F. Supp. 456, 462 (D.

Mass. 1997) (“The Internet has no territorial boundaries.

To paraphrase Gertrude Stein, as far as the Internet is

concerned, not only is there perhaps ‘no there there,’ the

‘there’ is everywhere where there is Internet access.”).

Patent protection is all about boundaries. An applicant

has the right to obtain a patent only if he can describe,

with reasonable clarity, the metes and bounds of his

invention. See Festo Corp. v. Shoketsu Kinzoku Kogyo

Kabushiki Co., 535 U.S. 722, 730 (2002) (explaining that

the patent “monopoly is a property right[] and like any

property right, its boundaries should be clear”). A proper-

ly issued patent claim represents a line of demarcation,

defining the territory over which the patentee can exer-

cise the right to exclude. See Nautilus, Inc. v. Biosig

Instruments, Inc., 134 S. Ct. 2120, 2129 (2014) (emphasiz-

ing that “a patent must be precise enough to afford clear

notice of what is claimed, thereby appris[ing] the public of

what is still open to them” (citations and internal quota-

tion marks omitted)).

Software, however, is akin to a work of literature or a

piece of music, undeniably important, but too unbounded,

i.e., too “abstract,” to qualify as a patent-eligible inven-

tion. See Microsoft, 550 U.S. at 447–48 (explaining that

software “instructions . . . detached from any medium” are

analogous to “[t]he notes of Beethoven’s Ninth Sympho-

ny”). And, as discussed previously, given that generic

computers are both omnipresent and indispensable, they

are incapable of providing structure “sufficiently definite

to confine the patent monopoly within rather definite

bounds,” Benson, 409 U.S. at 69. In short, because direct-

ing that software should be applied via standard comput-

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 13

er elements is little different than stating that it should

be written down using pen and paper, generically-

implemented software lacks the concrete contours re-

quired by section 101. See Alice, 134 S. Ct. at 2352 (em-

phasizing that “merely requiring generic computer

implementation” does not remove claims from the realm

of the abstract).

Declaring that software implemented on a generic

computer falls outside of section 101 would provide much-

needed clarity and consistency in our approach to patent

eligibility. It would end the semantic gymnastics of trying

to bootstrap software into the patent system by alleging it

offers a “specific method of filtering Internet content,” see

BASCOM Global Internet Servs., Inc. v. AT&T Mobility

LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), makes the

computer faster, see Enfish, LLC v. Microsoft Corp., 822

F.3d 1327, 1337–39 (Fed. Cir. 2016), or the Internet

better, see DDR Holdings, LLC v. Hotels.com, L.P., 773

F.3d 1245, 1257 (Fed. Cir. 2014), just to snuggle up to a

casual bit of dictum in Alice, 134 S. Ct. at 2359. Software

runs computers and the Internet; improving them up to

the current limits of technology is merely more of the

same. The claims at issue in BASCOM, Enfish, and DDR,

like those found patent ineligible in Alice, do “no more

than require a generic computer to perform generic com-

puter functions,” Alice, 134 S. Ct. at 2359. Eliminating

generically-implemented software patents would clear the

patent thicket, ensuring that patent protection promotes,

rather than impedes, “the onward march of science,”

O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853), and

allowing technological innovation to proceed apace.

United States Court of Appeals

for the Federal Circuit

______________________

INTELLECTUAL VENTURES I LLC,

Plaintiff-Appellant

v.

SYMANTEC CORP.,

Defendant-Cross-Appellant

TREND MICRO INCORPORATED, TREND MICRO,

INC. (USA),

Defendants-Appellees

______________________

2015-1769, 2015-1770, 2015-1771

______________________

Appeals from the United States District Court for the

District of Delaware in Nos. 1:10-cv-01067-LPS, 1:12-cv-

01581-LPS, Chief Judge Leonard P. Stark.

______________________

STOLL, Circuit Judge, dissenting in part.

I concur in the result reached by the majority except

with respect to the ’610 patent. I would affirm the judg-

ment of the district court that asserted claim 7 of the ’610

patent is eligible under § 101.

The ’610 patent confirms that the claimed invention

“advantageously screen[s] computer data for viruses

within a telephone network before communicating the

computer data to an end user.” ’610 patent col. 1 ll. 59–

61. The patent explains that this was a fundamental

2 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

architectural shift from prior-art virus screening, which

occurred locally on an end user’s computer rather than

centrally as in the invention. Id. col. 1 ll. 10–11. This

shift improved the overall security of telecommunication

networks by thwarting the ability of viruses to reach and

exploit end users. Using the patented invention, end

users could communicate over a network “without concern

of receiving various predetermined computer viruses.” Id.

col. 1 ll. 63–64; see also Intellectual Ventures I LLC v.

Symantec Corp. (Dist. Ct. Op.), 100 F. Supp. 3d 371, 400

(D. Del. 2015). As IV’s expert, Dr. McDaniel, testified at

trial, “the key about the ’610[] is because it’s actually on a

network, . . . it’s out on the cloud. So that’s a big ad-

vantage, because all of the dangerous code goes out there”

and it becomes “somebody else’s problem to deal with it,”

not the end users’. J.A. 800 (Trial Tr. 518 ll. 9–16).

Additionally, as the district court noted, the patent helped

solve “the problem of individual computer users having

periodically to update their virus screening software

locally on their computers in order to ensure adequate

protection from computer viruses.” Dist. Ct. Op., 100

F. Supp. 3d at 400; see also ’610 patent col. 1 ll. 20–23

(explaining that in prior art configurations “each comput-

er user has to repeatedly upgrade the virus screening

software installed on his/her computer to ensure protec-

tion from recently-discovered viruses”). Dr. McDaniel

described this improvement as closing the virus “protec-

tion gap” that existed in computer networks before the

’610 patent because “as soon as Symantec knows about a

virus, you have got protection in your e-mail immediate-

ly.” J.A. 808 (Trial Tr. 526 ll. 2–7); see also id. 800 (Trial

Tr. 518 ll. 2–6).

I agree with the district court that the claimed inven-

tion is eligible under § 101. Dist. Ct. Op., 100 F. Supp. 3d

at 396–400. Analyzing claim 7 under the Mayo/Alice

framework, I accept the majority’s step-one determination

that the patent is directed to the abstract idea of “virus

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 3

screening.” Maj. Op. 20. But I depart from the majority’s

analysis at step two—the “search for an ‘inventive con-

cept’” that “‘transform[s]’ the claimed abstract idea into a

patent-eligible application.” Alice, 134 S. Ct. at 2355,

2357 (quoting Mayo Collaborative Servs. v. Prometheus

Labs., Inc., 132 S. Ct. 1289, 1294, 1298 (2012)). The

majority gives short shrift to the Supreme Court’s instruc-

tion that in step two we must “consider the elements of

each claim both individually and ‘as an ordered combina-

tion.’” Alice, 134 S. Ct. at 2355 (emphasis added) (quoting

Mayo, 132 S. Ct. at 1297). The Supreme Court explained

that this approach “is consistent with the general rule

that patent claims ‘must be considered as a whole.’” Alice,

134 S. Ct. at 2355 n.3 (quoting Diamond v. Diehr, 450

U.S. 175, 188 (1981)) (citing Parker v. Flook, 437 U.S. 584,

594 (1978)).

Claim 7 is eligible as an ordered combination. While

the network components and virus screening software

recited by the claim may themselves be conventional, “an

inventive concept can be found in the non-conventional

and non-generic arrangement of known, conventional

pieces.” BASCOM Glob. Internet Servs., Inc. v. AT&T

Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). As

described above, claim 7’s inventive concept is moving

virus screening software from its typical location on end

users’ computers and deploying it instead “within the

telephone network” itself. ’610 patent col. 14 l. 37. Thus,

the invention harnesses network architecture and exploits

it by utilizing a non-conventional and non-generic ar-

rangement of virus screening components, which im-

proves overall network security and usability. As to this

arrangement being non-conventional and non-generic, the

district court had before it IV’s expert testimony that the

invention provided a novel solution to the protection gap

problem and greatly reduced the likelihood of an end user

receiving a virus when it held claim 7 eligible. I also note

that the jury verdict in the Symantec case—the only one

4 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

of the consolidated cases that went to trial—found the

’610 patent not invalid over the asserted prior art. While

I recognize that validity under §§ 102 and 103 is a distinct

inquiry from eligibility under § 101, and may not be

dispositive of § 101, the jury verdict nonetheless supports

the notion that this particular ordering of the components

in claim 7 was not conventional at the time. See Internet

Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347

(Fed. Cir. 2015) (“[P]ragmatic analysis of § 101 is facili-

tated by considerations analogous to those of §§ 102 and

103 as applied to the particular case.”).

The claimed invention is also markedly similar to that

in BASCOM, where we vacated the district court’s ineligi-

bility determination on the basis of a step-two ordered

combination. Compare ’610 patent col. 1 ll. 59–61 (“Em-

bodiments of the present invention advantageously screen

computer data for viruses within a telephone network

before communicating the computer data to an end us-

er.”), with BASCOM, 827 F.3d at 1348 (“The claims of the

’606 patent are directed to filtering content on the Inter-

net,” i.e., not on a user’s local computer). We found the

abstract idea in BASCOM to be “filtering content,”

BASCOM, 827 F.3d at 1348–49, similar to the abstract

idea of “virus screening” in this case, Maj. Op. 20. Unlike

the majority here, this court in BASCOM recognized that

although “the limitations of the claims, taken individual-

ly, recite generic computer, network and Internet compo-

nents,” the patent’s “particular arrangement of elements

is a technical improvement over prior art ways of filtering

such content.” BASCOM, 827 F.3d at 1349, 1350. The

court in BASCOM identified several concrete problems

that the patent in that case addressed, much like how the

patent before us addressed specific technological issues

with virus screening, such as the protection gap. Thus,

the court found the claims of the BASCOM patent to be

“more than a drafting effort designed to monopolize the

[abstract idea],” id. at 1350–51 (quoting Alice, 134 S. Ct.

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. 5

at 2357), because they “may be read to ‘improve an exist-

ing technological process,’” id. at 1351 (quoting Alice, 134

S. Ct. at 2358 (discussing claims in Diehr, 450 U.S. 175)).

There is no meaningful difference between BASCOM and

this case in terms of eligibility because claim 7 also “pur-

port[s] to improve the functioning of the computer itself,”

or, at the very least, the functioning of the network. Dist.

Ct. Op., 100 F. Supp. 3d at 400 (quoting Alice, 134 S. Ct.

at 2359); see also Oral Argument at 25:30–26:17, availa-

ble at http://oralarguments.cafc.uscourts.gov/default.

aspx?fl=2015-1769.mp3 (counsel for Symantec acknowl-

edging that, under Alice, a patent that improves the

functioning of a network may be patent eligible under

§ 101).

I disagree with the majority’s characterization of this

case as fitting within our line of cases rendering ineligible

patents that merely “perform[] otherwise abstract activity

on the Internet.” Maj. Op. 20. The claims at issue in

those cases, like the claims at issue in Alice, simply

invoked the Internet as a means to an end; they did not

improve the security and functioning of the Internet itself.

Patents that fall within that paradigm are ineligible

because “the focus of the[ir] claims is not on such an

improvement in computers as tools, but on certain inde-

pendently abstract ideas that use computers as tools.”

Elec. Power Grp., LLC v. Alstom S.A., No. 2015-1778,

2016 WL 4073318, at *4 (Fed. Cir. Aug. 1, 2016). In

contrast, claim 7 constitutes an improvement of the

network itself and, thus, focuses on improving computers

as tools. See BASCOM, 827 F.3d at 1351 (describing

similar patent as “not claiming the idea of filtering con-

tent simply applied to the Internet” but rather “a technol-

ogy-based solution . . . to filter content on the Internet

that overcomes existing problems with other Internet

filtering systems”). Describing claimed inventions similar

to the one at issue here, we have said that we “are not

persuaded that the invention’s ability to run on a general-

6 INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP.

purpose computer dooms the claims” if the claims “are

directed to an improvement in the functioning of a com-

puter.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,

1338–39 (Fed. Cir. 2016) (distinguishing collection of

cases involving claims which “simply add[] conventional

computer components to well-known business practices”).

For these reasons, I respectfully dissent from the ma-

jority opinion regarding the ’610 patent and would affirm

the judgment of the district court holding that asserted

claim 7 of the ’610 patent is eligible under § 101.