Respondents Brief — Eolas Technologies Incorporated, Petitioner v. Amazon.com, Inc., et al.
Supreme Court briefJul 31, 2024
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No. 23-1184
In the
Supreme Court of the United States
EOLAS TECHNOLOGIES INCORPORATED,
Petitioner,
v.
AMAZON.COM, INC., et al.,
Respondents.
ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
BRIEF OF RESPONDENTS
IN OPPOSITION
DOUGLAS E. LUMISH
RICHARD G. FRENKEL
JOSEPH H. LEE
AMIT MAKKER
LATHAM & WATKINS LLP
140 Scott Drive
Menlo Park, CA 94025
GABRIEL K. BELL
Counsel of Record
CHARLES S. DAMERON
LATHAM & WATKINS LLP
555 11th Street, NW
Suite 1000
Washington, DC 20004
(202) 637-2200
gabriel.bell@lw.com
Counsel for Respondent Amazon.com, Inc.
(additional counsel on signature page)
i
QUESTION PRESENTED
This Court has long held that “[l]aws of nature,
natural phenomena, and abstract ideas” are not patentable under Section 101 of the Patent Act, 35
U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (citation omitted); see also
O’Reilly v. Morse, 56 U.S. (15 How.) 62, 112-20 (1854).
In Alice, the Court reaffirmed that “the ‘abstract
ideas’ category embodies the longstanding rule that
“[a]n idea of itself”’”—any idea of itself—“‘is not patentable.’” Id. at 218 (alteration in original) (citation
omitted). The concern undergirding the rule is one of
preemption—namely, granting to private interests
monopolies over vast swaths of future innovation
based on patent claims that recite ideas or results untethered to any innovative way of achieving them.
Morse, 56 U.S. at 112-13; see Alice, 573 U.S. at 216,
225-27. Thus, a patent claim must be limited by an
“‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). In the
computing arts, where a claim to an idea or result is
limited by only “generic” computers performing their
generic “functions,” id. at 226, the claim is tantamount to a claim to the idea or result itself, and is
therefore ineligible for patenting.
The question presented is whether the Federal
Circuit properly applied Alice when it concluded that
petitioner’s patent claims are ineligible under Section
101 because they claim the abstract idea of “interacting with data objects on the World Wide Web,”
Pet. App. 15a, using only conventional and generic
computers performing conventional and generic computing functions, id. at 18a-19a.
ii
CORPORATE DISCLOSURE STATEMENTS
Pursuant to Supreme Court Rule 29.6, respondent
Amazon.com, Inc. (“Amazon”) states that it has no
parent corporation and that no publicly held company
owns ten percent or more of its stock.
Respondent Google LLC (“Google”) states that
Google LLC is a subsidiary of XXVI Holdings Inc.,
which is a subsidiary of Alphabet Inc., a publicly
traded company. No publicly held company owns ten
percent or more of Alphabet Inc.’s stock.
Respondent Walmart, Inc. (“Walmart”) states that
it has no parent corporation and that no publicly held
company owns ten percent or more of its stock.
iii
TABLE OF CONTENTS
Page
QUESTION PRESENTED ......................................... i
CORPORATE DISCLOSURE STATEMENTS ......... ii
TABLE OF AUTHORITIES ..................................... iv
INTRODUCTION .......................................................1
STATEMENT OF THE CASE ....................................3
A. Section 101 And Alice ....................................3
B. Eolas’s Patent Claims ....................................7
C. Procedural History ......................................11
D. The Federal Circuit’s Decision ....................14
REASONS FOR DENYING THE PETITION..........18
I.
The Federal Circuit’s Application Of Alice
Does Not Warrant Review ..................................18
A. The Federal Circuit Correctly Stated
And Applied Alice In This Case ..................18
B. Eolas Fails To Identify Any Error
Warranting Certiorari .................................22
II. Eolas Has Shown No Reason To Revisit
Alice In This Case ...............................................29
III. This Case Is A Singularly Bad Vehicle For
Revisiting Alice ...................................................32
CONCLUSION ..........................................................34
iv
TABLE OF AUTHORITIES
Page(s)
CASES
AbbVie Inc. v. Mathilda & Terence
Kennedy Institute of Rheumatology
Trust,
764 F.3d 1366 (Fed. Cir. 2014) ............................25
Alice Corp. Pty. Ltd. v. CLS Bank
International,
573 U.S. 208 (2014) ........................ 1, 4, 6-7, 13-15,
18-21, 23-24, 26-27, 31
American Axle & Manufacturing, Inc. v.
Neapco Holdings LLC,
142 S. Ct. 2902 (2022)............................................7
CareDx Inc. v. Natera, Inc.,
144 S. Ct. 248 (2023)..............................................7
Diamond v. Diehr,
450 U.S. 175 (1981) ................................................3
Eolas Technologies Inc. v. Adobe
Systems, Inc.,
No. 09-cv-446, 2012 WL 12896524
(E.D. Tex. July 19, 2012) .......................................9
Eolas Technologies Inc. v. Amazon.com,
Inc.,
521 F. App’x 928 (Fed. Cir. 2013 ...........................9
Eolas Technologies, Inc. v. Microsoft
Corp.,
399 F.3d 1325 (Fed. Cir. 2005) ..............................8
Gottschalk v. Benson,
409 U.S. 63 (1972) ........................................4, 5, 22
v
TABLE OF AUTHORITIES—Continued
Page(s)
HP Inc. v. Berkheimer,
140 S. Ct. 911 (2020)..............................................7
IBM Corp. v. Zillow Group, Inc.,
No. 22-1861, 2024 WL 89642 (Fed.
Cir. Jan. 9, 2024) .................................................30
Interactive Wearables, LLC v. Polar
Electro Oy,
143 S. Ct. 2482 (2023)............................................7
Le Roy v. Tatham,
55 U.S. (14 How.) 156 (1853) .......................1, 3, 27
Mayo Collaborative Services v.
Prometheus Laboratories, Inc.,
566 U.S. 66 (2012) ............................ 3, 6, 18, 19, 27
O’Reilly v. Morse,
56 U.S. (15 How.) 62 (1854) ............. 1, 4, 18, 26, 31
Parker v. Flook,
437 U.S. 584 (1978) ......................................5, 6, 22
Rubber-Tip Pencil Co. v. Howard,
87 U.S. (20 Wall.) 498 (1874)...........................3, 27
Trading Technologies International,
Inc. v. IBG LLC,
140 S. Ct. 954 (2020)..............................................7
Tropp v. Travel Sentry, Inc.,
143 S. Ct. 2483 (2023)............................................7
TS Patents LLC v. Yahoo! Inc.,
139 S. Ct. 1569 (2019)............................................7
vi
TABLE OF AUTHORITIES—Continued
Page(s)
Universal Secure Registry LLC v. Apple
Inc.,
142 S. Ct. 2707 (2022)............................................7
Visual Memory LLC v. NVIDIA Corp.,
867 F.3d 1253 (Fed. Cir. 2017) ............................31
STATUTES
35 U.S.C. § 101 ..................................................2, 3, 26
OTHER AUTHORITIES
Nikola L. Datzov & Jason Rantanen,
Predictable Unpredictability 43,
Univ. of Iowa Legal Studies
Research Paper No. 2024-04 (2023),
https://papers.ssrn.com/sol3/
papers.cfm?abstract_ id=4380434
(forthcoming Iowa L. Rev.) ............................30, 31
Shahrokh Falati, To Promote
Innovation, Congress Should Abolish
the Supreme Court Created
Exceptions to 35 U.S. Code § 101, 28
Tex. Intell. Prop. L.J. 1 (2019) ......................29, 32
Richard Gruner, Lost in Patent
Wonderland with Alice: Finding the
Way Out, 72 Syracuse L. Rev. 1053
(2022) ....................................................................29
James Hicks, Do Patents Drive
Investment in Software?, 118 Nw. U.
L. Rev. 1277 (2024) ..............................................32
vii
TABLE OF AUTHORITIES—Continued
Page(s)
Beethika Khan et al., National Science
Board, Science and Engineering
Indicators: The State of U.S. Science
and Engineering (2020),
https://ncses.nsf.gov/pubs/nsb20201 ...................31
Letter from Tim Berners-Lee to James
E. Rogan, Director of the U.S.
Patent and Trademark Office (Oct.
28, 2003), https://perma.cc/B4JKGF97 .......................................................................8
National Academies of Sciences,
Engineering, & Medicine, Protecting
U.S. Technological Advantage (2022),
https://nap.nationalacademies.org/
catalog/26647/protecting-ustechnological-advantage ......................................31
Patent Eligibility Restoration Act:
Hearings on S. 2140 Before the
Subcomm. on Intell. Property, 118th
Cong. (Jan. 23, 2024) (statement of
Hon. David Kappos),
https://www.judiciary.senate.gov/imo/
media/doc/2024-01-23_-_testimony__kappos.pdf ..........................................................29
1
INTRODUCTION
For more than 150 years, this Court has repeatedly held that ideas or results—no matter how purportedly novel—are ineligible for patenting. The
reason for the rule is plain: When a patent claims a
result untethered to any specific, much less inventive,
way of achieving it, the patent risks owning all ways
of doing so, including future ways not yet invented.
Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175-76
(1853); O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113-21
(1854). As this Court explained in its most recent decision on patent-eligibility, “the concern that drives
this exclusionary principle [is] one of pre-emption.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
The rule is no less important in today’s computer
age than it was in the day of Samuel Morse’s telegraph. Just as the use of generic wires and circuits,
however arranged, did not, without more, confer
patent eligibility on the result of telegraphy, so too the
recitation of generic computing components performing their generic functions, without more, does not
confer patentability on the abstract idea of an interactive World Wide Web. In both instances, there
must be something more, something that meaningfully limits the idea or result, to ensure that a patent
does not remove from the public store of knowledge
what is, in effect, the idea or result itself.
For more than 30 years, Eolas has asserted—including in multiple litigations against scores of Internet companies—that in 1994 it invented “interacting
with data objects on the World Wide Web,”
Pet. App. 15a, an assertion that threatened to
preempt an inconceivably vast swath of American
2
technology and commerce. At the same time, its patents recited only generic computers performing
generic functions to achieve this purportedly novel
computing result. Judges and jurors around the nation rejected Eolas’s patents multiple times and on
multiple grounds.
The present petition should be no exception. The
petition arises from a unanimous, unpublished Federal Circuit decision affirming the district court’s determination that Eolas’s claims are ineligible for patenting under 35 U.S.C. § 101. Applying the standard
prescribed in Alice, the Federal Circuit concluded that
Eolas’s claims recite only aspirational results without
any specific technological solution for achieving them,
and thus risk preempting all ways, including future
ways, of interacting with objects on the World Wide
Web. The court’s decision was an unremarkable application of Alice that broke no new legal ground.
Eolas contends that the Federal Circuit’s decision
somehow conflicts with Alice. Not so. The decision
below reflects careful adherence to Alice’s teachings,
and the outcome is commanded by Alice’s reasoning.
And even if the Federal Circuit had misapplied Alice
or misunderstood the record in this one case (though
it did neither), that alone would not warrant this
Court’s review.
Eolas also contends that this Court should grant
certiorari to reduce alleged “confusion” regarding
Alice’s proper application. Pet. 26. But this Court has
repeatedly rejected similar requests, and the premise
of those requests is unfounded in any event. Data
show that Alice is one of the most predictably applied
precedents in all of patent law. And even if the Court
were seeking an opportunity to revisit Alice, the present petition is a singularly unsuitable vehicle for
3
doing so. This case concerns a unanimous, nonprecedential opinion rejecting a patent that presents a high
risk of preemption. Eolas does not and cannot propose
any interpretation of Alice under which its patent
claims—as understood by the Federal Circuit—would
be patent-eligible. Rather, Eolas argues that the Federal Circuit misunderstood the patent claims—an argument that largely ignores the Federal Circuit’s reasoning. Regardless, this case-specific dispute over the
correct understanding of the claims presents no basis
for certiorari.
The petition should be denied.
STATEMENT OF THE CASE
A. Section 101 And Alice
1. Section 101 of the Patent Act provides that
“[w]hoever invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions
and requirements of this title.” 35 U.S.C. § 101.
This Court has consistently recognized “an important implicit exception” to this provision. Mayo
Collaborative Servs. v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012). “‘[L]aws of nature, natural
phenomena, and abstract ideas’ are not patentable.”
Id. (alteration in original) (quoting Diamond v. Diehr,
450 U.S. 175, 185 (1981)). It follows that “[a] patent
is not good for an effect, or the result of a certain process, as that would prohibit all other persons from
making the same thing by any means whatsoever.
This, by creating monopolies, would discourage arts
and manufactures, against the avowed policy of the
patent laws.” Le Roy, 55 U.S. at 175 (emphasis
added); see also Rubber-Tip Pencil Co. v. Howard, 87
4
U.S. (20 Wall.) 498, 507 (1874) (explaining that an
“idea of itself is not patentable, but a new device by
which it may be made practically useful is”); Alice, 573
U.S. at 223 (“This conclusion accords with the
preemption concern that undergirds our §101 jurisprudence.”).
Thus, when Samuel Morse—having invented the
telegraph—claimed a broad, exclusive right to “the
use of the motive power of the electric or galvanic current, which [he] call[ed] electro-magnetism, however
developed for marking or printing intelligible characters … at any distances,” this Court rejected that
claim as unpatentable. Morse, 56 U.S. at 112. As this
Court explained, Morse sought exclusive ownership of
a “result” without any regard to the “process or machinery” by which “the result is accomplished.” Id. at
113. The problem, the Court noted, was that “[f]or
aught that we now know some future inventor, in the
onward march of science, may discover a mode of writing or printing at a distance by means of the electric
or galvanic current, without using any part of the process or combination” disclosed by Morse. Id. “[Y]et if
it is covered by this patent the inventor could not use
it, nor the public have the benefit of it without
[Morse’s] permission.” Id. The Court recognized that
permitting Morse’s claim would “shut[ ] the door
against [the] inventions of other persons.” Id.
2. More recently, this Court applied these principles in considering computer-related patents. In
Gottschalk v. Benson, the Court considered whether
Section 101 permitted the patenting of “a method for
converting binary-coded decimal (BCD) numerals into
pure binary numerals.” 409 U.S. 63, 64 (1972). The
patent claims “were not limited to any particular art
or technology, to any particular apparatus or
5
machinery, or to any particular end use,” and they
“purported to cover any use of the claimed method in
a general-purpose digital computer of any type.” Id.
Indeed, the “method sought to be patented … [could]
be carried out in existing computers long in use, no
new machinery being necessary.” Id. at 67. The
Court unanimously held that the claim was not patent-eligible because the “practical effect” of the claim
was to “patent an idea”—a mathematical formula—
and “wholly pre-empt” that idea. Id. at 71-72.
A few years later, in Parker v. Flook, the Court revisited the same issue in the context of a patent claiming a “formula for updating the value of an alarm limit
on any process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons.” 437 U.S. 584, 586 (1978). There, the “only difference between the conventional methods of changing alarm limits” and the method described in the
claims was found “in the second step [of the claimed
process]—the mathematical algorithm or formula.”
Id. at 585-86. The Court held the claims patentineligible. The Court reaffirmed that an abstract concept, being one of the “‘basic tools of scientific and
technological work,’” could not be patented even if it
was “new and useful.” Id. at 591 (citation omitted).
And while the Court recognized that a claimed process is not unpatentable simply because it contains an
abstract concept, it also rejected the notion that a patentee could “transform an unpatentable principle
into a patentable process” simply by adding “postsolution activity, no matter how conventional or obvious in itself.” Id. at 590. Where the rest of the process
disclosed in the claims—excluding the unpatentable
principle—is “well known,” the addition of a novel but
6
abstract concept does not amount to a “patentable invention.” Id. at 594.
Most recently, the Court reaffirmed these principles in Alice, a case concerning claims “relat[ing] to a
computerized scheme for mitigating ‘settlement
risk’—i.e., the risk that only one party to an agreedupon financial exchange will satisfy its obligation.”
573 U.S. at 213. Building on precedent, Alice treated
the Section 101 inquiry as a two-step test. Id. at 21718. At Alice step one, the Court determines “whether
the claims at issue are directed to … patent-ineligible
concepts”—that is, “‘laws of nature, natural phenomena, [or] abstract ideas.’” Id. at 217. If so, the Court
then proceeds to Alice step two, in which it considers
any additional claim elements “both individually and
‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting
Mayo, 566 U.S. at 78-79). This second step asks
whether the patent claims an “inventive concept” that
makes the “patent in practice … significantly more
than a patent upon the [ineligible concept] itself.” Id.
at 217-18 (alteration in original) (quoting Mayo, 566
U.S. at 72-73). Alice reaffirmed that the presence of
“‘conventional [process] steps, specified at a high level
of generality,’” is “not ‘enough’ to supply an ‘inventive
concept.’” Id. at 222 (alteration in original) (emphasis
and citation omitted).
In applying the first step, Alice determined that
the patent claims at issue were “directed to a patentineligible concept” because they were “drawn to the
abstract idea of intermediated settlement.” Id. at 218.
As the Court explained, that concept is a “‘fundamental economic practice’” and a “building block of the
modern economy.” Id. at 219-20 (citation omitted).
7
Thus, it falls “within the realm of ‘abstract ideas.’” Id.
at 221. And at step two, the Court concluded that the
patent claims’ implementation steps “merely require[d] generic computer implementation,” and
therefore “fail[ed] to transform that abstract idea into
a patent-eligible invention.” Id.
4. Notably, this Court has recently fielded numerous petitions asking it to revisit Alice. See, e.g.,
CareDx Inc. v. Natera, Inc., 144 S. Ct. 248 (2023);
Tropp v. Travel Sentry, Inc., 143 S. Ct. 2483 (2023);
Interactive Wearables, LLC v. Polar Electro Oy, 143
S. Ct. 2482 (2023); Universal Secure Registry LLC v.
Apple Inc., 142 S. Ct. 2707 (2022); Am. Axle & Mfg.,
Inc. v. Neapco Holdings LLC, 142 S. Ct. 2902 (2022);
Trading Techs. Int’l, Inc. v. IBG LLC, 140 S. Ct. 954
(2020); HP Inc. v. Berkheimer, 140 S. Ct. 911 (2020);
TS Patents LLC v. Yahoo! Inc., 139 S. Ct. 1569 (2019).
Just two Terms ago, the Solicitor General called on
the Court to grant two such petitions. See U.S. Amicus Br. 23, Interactive Wearables, LLC v. Polar Electro
Oy, 143 S. Ct. 2482 (2023) (Nos. 21-1281, 22-22); U.S.
Amicus Br. 22-25, Am. Axle & Mfg., Inc. v. Neapco
Holdings LLC, 142 S. Ct. 2902 (2022) (No. 20-891).
All of those petitions were denied.
B. Eolas’s Patent Claims
For three decades, Eolas has claimed ownership of
all “interactive” webpages. For nearly as long, commentators decried those claims even as courts and juries rejected them. The patent claims at issue in this
case are Eolas’s latest and last effort in its decadeslong campaign to claim ownership of interactivity on
the World Wide Web.
1. The ancestry of the claims at issue in this case
traces back to Eolas’s 1994 application for what would
8
become U.S. Patent No. 5,838,906 (“the ’906 patent”).
Eolas described the purported invention disclosed in
that patent as having made “possible the interactive
web” by enabling web users to “interact with objects
displayed in browser-controlled windows.” PlaintiffsAppellants Br. 2, 4, Eolas Techs. Inc. v. Amazon.com
Inc., 521 F. App’x 928 (Fed. Cir. 2013) (No. 12-1632),
2012 WL 6100517. Soon after the Patent and Trademark Office (PTO) issued the ’906 patent, Eolas sued
Microsoft, alleging infringement by Microsoft’s Internet Explorer web browser. See Eolas Techs., Inc. v.
Microsoft Corp., 399 F.3d 1325, 1328 (Fed. Cir. 2005).
Eolas won a jury trial, but the Federal Circuit vacated
the judgment on appeal. Id. at 1335.
During the pendency of the Microsoft litigation,
the World Wide Web’s inventor, Sir Tim Berners-Lee,
wrote to the PTO, urging it to “consider the impact” of
the ’906 patent on “World Wide Web users, software
developers, and the many commercial and non-commercial organizations that depend on the Web every
day.” Ltr. from Tim Berners-Lee to James E. Rogan,
Director of the U.S. Patent and Trademark Office
(Oct. 28, 2003), https://perma.cc/B4JK-GF97. He
warned that the ’906 patent threatened “substantial
economic and technical damage to the operation of the
World Wide Web” because the “barriers imposed” by
the ’906 patent would “cause fragmentation in the
basic standards that weave the Web together.” Id.
Notwithstanding these concerns, Eolas received a
continuation patent, U.S. Patent No. 7,599,985 (“the
’985 patent”), claiming priority to Eolas’s initial 1994
application and claiming effectively the same purported invention. In 2009, shortly after the issuance
of that continuation patent, Eolas filed suit in the
Eastern District of Texas against a diverse group of
9
23 defendants for infringement of the ’906 and ’985
patents. See Eolas Techs. Inc. v. Adobe Sys., Inc., No.
09-cv-446, 2012 WL 12896524, at *1 & n.1 (E.D. Tex.
July 19, 2012). The only common thread linking these
disparate defendants—ranging from Amazon, Apple,
and Google to J.C. Penney, Office Depot, and Playboy—was their maintenance of interactive webpages.
Id. The case went to trial, where the defendants presented a prior-art defense supported by the testimony
of Berners-Lee and a host of other early Web pioneers.
Id. at *6. The Texas jury found both patents invalid,
id. at *1, and the Federal Circuit affirmed, see Eolas
Techs. Inc. v. Amazon.com, Inc., 521 F. App’x 928, 928
(Fed. Cir. 2013) (per curiam).
2. But Eolas was not done. In 2011, while the
Texas suit was pending, Eolas hedged against the risk
that the ’906 and ’985 patents would be invalidated by
filing another continuation application—again claiming priority to the same 1994 application and again
claiming the same basic invention—for what would
become U.S. Patent No. 9,195,507 (“the ’507 patent”).
That is the patent at issue in this case.
The ’507 patent, like its predecessors in the Eolas
patent family—with which it shares the same specification—describes its invention as allowing “a user at
a client computer connected to a network to locate, retrieve and manipulate objects in an interactive way.”
Pet. App. 29a (quoting ’507 Patent 6:57-59). According to the specification, the Internet provides an “open
distributed hypermedia system” that allows users to
display and retrieve objects located at remote computers by clicking on links. Id. (quoting ’507 Patent 2:416). When the user’s computer retrieves the object, it
is displayed to that user. Id. According to the specification, a shortcoming of “the present open
10
distributed hypermedia system on the Internet” is
that, while it “allows users to locate and retrieve data
objects,” it “allows users very little, if any, interaction
with these data objects.” Id. (quoting ’507 Patent
6:25-34). Thus, according to the specification, the
claimed invention provides systems and methods for
enabling users to “locate, retrieve and manipulate objects in an interactive way.” Id. at 30a (quoting ’507
Patent 6:45-59).
Eolas has asserted numerous claims from the ’507
patent. The parties agree that claim 32 is representative. Id. at 6a. That claim recites a “method, performed by a server computer connected to the World
Wide Web distributed hypermedia network on the Internet, for disseminating interactive content via the
World Wide Web” using two basic steps: (A) the
server “receiv[es] … a request for information”; and
(B) the server “transfer[s] … the information onto the
World Wide Web.” Id. (quoting ’507 Patent cl. 32).
The claim further states that a “World Wide Web
browser on a client computer” (i) is “configured with a
plurality of different interactive-content applications”1 that “enable a user to interact” with objects
displayed in a webpage; (ii) “detect[s] at least part of
an object to be displayed in a World Wide Web page”
and “display[s]” the page to the user; and (iii) “select[s]” and “invoke[s]” an interactive-content application enabling the user to “interact within the World
Wide Web page with at least part of the object” using
1
Eolas has consistently pressed and obtained broad, functional constructions of the various claim terms of the ’507 patent.
For instance, Eolas understands “interactive-content application” to mean any application that “enable[s] a user to interact
with content.” C.A. Fed. Cir. Appx. 6521.
11
“distributed application computers.” Id. at 6a-8a
(quoting ’507 Patent cl. 32). Eolas has also independently relied on claim 45, which recites a method
to “enable dissemination of interactive content to a
client computer” using “separate computers connected to the World Wide Web” that “work[ ] together
to perform viewing transformations to enable … interaction with at least part of [an] object.” Id. at 8a9a (quoting ’507 Patent cl. 45).
C. Procedural History
1. On November 24, 2015—the day the ’507 patent issued, more than 21 years after its initial patent
application—Eolas launched a new round of infringement lawsuits in the Eastern District of Texas against
respondents Amazon, Google, and Walmart. Id. at
27a. Eolas claimed that respondents infringed the
’507 patent by offering “web pages and content to be
interactively presented in browsers.” E.g., Compl.
¶ 15, Eolas Techs. Inc. v. Amazon.com, Inc., No. 15-cv1038 (E.D. Tex. Nov. 24, 2015).2
2
The attempted reach of Eolas’s claims under the ’507 patent is well illustrated by the range of products that have been
alleged to infringe. In the proceedings below, Eolas accused
Google products as diverse as Google Docs, AdWords, Google
Search, Gmail, Google Maps, and YouTube, as well as Amazon
Cart, Amazon Search, Amazon Product Viewer, Amazon Video,
Walmart Search, Walmart Cart, and Walmart Product Viewer
(among others) of infringing the ’507 patent. C.A. Fed. Cir.
Appx. 15328. And that attempted preemptive sweep was likewise reflected in Eolas’s predecessor patents, which Eolas asserted against everything from Internet Explorer and Java, see
Defendant-Appellant Br. 15-17, Eolas Techs. Inc. v. Microsoft
Corp., 399 F.3d 1325 (Fed. Cir. 2005) (No. 04-1234), 2004 WL
3960364, to the webpages maintained by Citigroup and FritoLay, see Pls.’ Corrected Third Am. Compl. ¶¶ 24-25, Eolas Techs.
12
Eolas’s suits were consolidated in 2016 and transferred to the Northern District of California in 2017
following fact discovery. Pet. App. 27a. Respondents
moved for summary judgment on several grounds
arising from the similarities between the ’507 patent
and the previously invalidated ’906 and ’985 patents.
Id. at 28a. In particular, respondents argued that the
’507 patent claims are not patentably distinct from
the claims that Eolas had presented in its previous
patents and were therefore invalid under the doctrine
of obviousness-type double patenting (OTDP) or
barred under various preclusion doctrines. See Mot.
Summ. J., Eolas Techs. Inc. v. Amazon.com, Inc., No.
17-cv-3022 (N.D. Cal. Mar. 25, 2020), Dkt. 592. The
district court denied the motion after concluding that
respondents had not supported their motion with sufficient “evidence of prior art” to establish that the ’507
patent claims are so indistinct from the previously litigated patent claims that they could be invalidated on
OTDP or preclusion grounds. See Order Denying Mot.
Summ. J. 11, 14-16, Eolas Techs. Inc. v. Amazon.com,
Inc., No. 17-cv-3022 (N.D. Cal. Apr. 27, 2021), Dkt.
655; Pet. App. 28a. Importantly, the district court
never found that Eolas’s claims used any unconventional computing equipment or any unconventional
combination of otherwise conventional computing
equipment.
2. Following expert discovery, respondents moved
for summary judgment of patent-ineligibility under
Section 101. The district court granted the motion.
See Pet. App. 26a-82a. In doing so, it recited the twopart Alice test and explained that patent claims
Inc. v. Adobe Sys. Inc., No. 09-cv-446 (E.D. Tex. Oct. 28, 2011),
Dkt. 1075.
13
“directed to an abstract idea” are unpatentable if they
do not contain “‘an inventive concept sufficient to
transform the claimed abstract idea into a patenteligible application.’” Id. at 36a (quoting Alice, 573
U.S. at 219, 221).
At Alice step one, the district court undertook a
particularized analysis of the asserted ’507 patent
claims, concluding that they are directed to nothing
more than the purely functional, “abstract idea of enabling interactivity with remote objects on a client
computer browser using distributed computing.” Id.
at 39a; see id. at 37a-71a (analyzing each of the ’507
patent claims at Alice step one). As the court explained, Eolas’s claims “require[ ] only results … without specifying how to achieve them.” Id. at 43a. And
the court rejected Eolas’s arguments that various
claim limitations are “directed to improvements in
computer technology,” including overcoming “limited
computing power in client computers” and providing
“‘security.’” Id. at 51a-52a (citation omitted). The
court noted that the ’507 patent either “does not claim
any particular way” of achieving these purported improvements, id. at 53a, or otherwise fails to describe
such improvements, id. at 56a-63a; see also, e.g., id.
at 66a (rejecting the notion that Eolas’s claims “are
directed to solutions to scalability and resource management problems”); id. at 71a (addressing claim limitations that do not “solve the problems discussed in
the specification”). Consequently, the court concluded
that “all of the asserted claims are directed to an abstract idea.” Id. at 72a.
At Alice step two, the district court concluded that
the claims’ additional limitations added nothing inventive. It is “undisputed that they require the use of
components … and basic functions … that are generic
14
and basic.” Id. at 75a. The court also rejected Eolas’s
argument that the court’s prior “analysis and findings
in the context of OTDP bear on the question of patenteligibility under § 101.” Id. at 77a-78a. As the court
noted, its “OTDP analysis” turned on the conclusion
that respondents “failed to proffer sufficient evidence
showing that the ’507 asserted claims were not ‘patentably distinct’ from the claims in earlier patents
that share the same specification.” Id. at 76a-77a (citation omitted). That analysis did not ask, much less
answer, the question whether the technological “solution discussed in the specification” was “captured in
the asserted claims in a non-abstract way.” Id. at 80a.
And the court answered that question in the negative:
the “asserted claims merely demand that interactivity
on [a] client computer browser be enabled via distributed computing, without specifying a particular way
of doing so that would circumvent the problems discussed in the specification.” Id. Accordingly, the
court granted summary judgment of patent-ineligibility with respect to all of the asserted ’507 patent
claims. Id. at 81a.
D. The Federal Circuit’s Decision
A unanimous Federal Circuit panel affirmed in a
nonprecedential opinion authored by Judge Stoll. Id.
at 1a-22a. The Federal Circuit correctly stated the
applicable standard: At Alice “step one,” the court
must “assess whether the claims at issue are directed
to a patent-ineligible concept, namely a law of nature,
natural phenomenon, or abstract idea.” Id. at 13a
(citing Alice, 573 U.S. at 217). Then, if “the answer is
yes,” the court must proceed to step two to determine
whether the claims contain an “‘inventive concept’
sufficient to ‘transform the nature of the claim into a
15
patent-eligible application.’” Id. (quoting Alice, 573
U.S. at 217-18).
At Alice step one, the Federal Circuit affirmed the
district court’s conclusion that the ’507 patent claims
“are directed to an abstract idea.” Id. at 15a. The
panel settled on a “slightly modified view” of what
that abstract idea is. Id. As the panel explained, “Eolas’s claims are not directed to computers, networks,
or interacting with content generally; rather, they recite interacting with content on the World Wide Web.”
Id. at 14a. The panel also determined that “implementation details” set forth in the claims—“i.e., using
distributed computing”—might be “best left for consideration under Alice step two” in order to preserve
the “opportunity” to consider whether distributed
computing transforms the invention into eligible subject matter. Id. at 15a. Thus, the panel concluded
that the ’507 claims are directed to “interacting with
data objects on the World Wide Web.” Id. And, as the
panel concluded, that concept is “an abstraction.” Id.
The panel then evaluated and rejected Eolas’s assertion that the ’507 patent claims are non-abstract
because they “capture ‘specific technological solutions
to [several] specific technological problems.’” Id. at
16a (citation omitted). As the panel explained, the
claims do not embody any inventive solutions to particular technological problems. Id. at 17a-18a.
First, the panel analyzed Eolas’s contention that
the ’507 patent claims “relocat[ed] … [an] interactive
content application from outside to inside the World
Wide Web browser itself,” and that this was “an important new structural change that improved interactivity with the World Wide Web.” Id. at 18a. The
panel identified two basic problems with that argument: (i) it was “waived” because “Eolas did not
16
present this alleged inventive concept” in the district
court; and, more importantly, (ii) the ’507 patent
claims “do … not recite,” and thus their breadth is not
limited by, “locating the interactive content applications within the browser.” Id.; see also id. at 11a &
n.3 (district court’s unchallenged construction of
claim terms does “not require that the interactive content applications be internal” to browser). Thus,
“[r]elocation of the interactive content application
within the web browser is … not an inventive concept
that renders the claims eligible under Alice step 2.”
Id. at 18a.
Second, the panel considered Eolas’s argument
that the “claims recite the inventive concept of distributed processing between the application in the
browser and applications on remote distributed computers.” Id. Once again, the panel identified two
problems with that argument: (i) it is “undisputed
that, at the time of the invention, distributed processing was well-understood, routine, conventional
activity,” id.; and (ii) the “claims merely describe a desired function”—the idea of “distributed processing”—
“without providing details of the claimed distributed
processing,” id. at 19a (emphasis added). In other
words, the claims do not “specify how the processing
is distributed among the distributed application computers,” and thus fail to limit the claims to anything
“different than generic distributed processing.” Id.
Third, the panel addressed Eolas’s argument that
“its claims alleviate certain security concerns” by
“limiting the invoked interactive content applications
to those configured to operate within the Web
browser.” Id. at 19a-20a. But, again, that “alleged
inventive concept is not within the scope (and thus
cannot limit the breadth) of the claims because, as
17
noted above, the claims do not actually require that
the interactive content applications be located within
the browser.” Id. at 20a.
Finally, the panel addressed Eolas’s assertion that
claim 45 requires “remote computers to generate and
send computer commands to perform ‘viewing transformations’” and thereby “improves a computer network system’s specific technical features or operations.” Id. The panel noted that the district court had
given a “broad construction” to the term “viewing
transformations” to mean “operations performed on
data for visual display to a user.” Id. at 20a-21a. That
construction—“unchallenged on appeal”—“encompasses visual display generally, something wellknown in the art at the time of the invention.” Id.
Furthermore, nothing else “in the claim or the specification show[s] how the recited viewing transformation differs from conventional visual display.” Id.
at 21a. Accordingly, the “viewing transformations”
term does not meaningfully limit the claims, and thus
“fails to transform the abstract idea into an eligible
technical solution.” Id.
Eolas declined to seek rehearing en banc.
18
REASONS FOR DENYING THE PETITION
I. The Federal Circuit’s Application Of Alice
Does Not Warrant Review
A. The Federal Circuit Correctly Stated
And Applied Alice In This Case
This is an unremarkable instance of a court of appeals stating the correct legal standard and applying
it to the facts of the case. The Federal Circuit’s analysis does not warrant this Court’s review.
1. Alice set forth a two-step analysis for assessing patent eligibility under Section 101. First, a
court should “determine whether the claims at issue
are directed to a patent-ineligible concept,” such as an
abstract idea or result. Alice, 573 U.S. at 218. Such
an “abstract idea” need not be a “preexisting, fundamental truth,” id. at 220. Rather, it can be a “building
block of the modern economy,” id., or some other generic, functional abstraction that—if patented—
would “impede innovation’” by “improperly tying up’”
the “basic tools of scientific and technological work,”
id. at 216 (citations omitted); see also Morse, 56 U.S.
at 112-13 (warning that abstract claims reciting a
“purpose” or “result,” without respect to the “process
or machinery [by which] the result is accomplished,”
would effectively “shut[ ] the door against [the] inventions of other persons”).
If a patent claim is directed to an abstract idea or
other ineligible subject matter, the second step is to
determine whether the elements of the claim, considered “individually and ‘as an ordered combination,’”
Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79),
contain “an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
application,” id. at 221 (quoting Mayo, 566 U.S. at 72,
19
79). Such a concept must reflect “more than a drafting effort designed to monopolize the [abstract idea].”
Id. (alteration in original) (quoting Mayo, 566 U.S.
at 77).
2. The Federal Circuit correctly articulated the
two-step Alice analysis. Pet. App. 13a-14a. It faithfully applied that analysis in concluding that the ’507
patent claims subject matter that is ineligible for patenting under Section 101. Id. at 14a-22a. That casespecific decision does not warrant certiorari.
At step one, the Federal Circuit considered
whether the asserted claims of the ’507 patent are directed to an abstract idea. Id. at 14a-15a. The court
acknowledged that Eolas’s claims “recite[ ] certain
configuration requirements of a World Wide Web
browser, World Wide Web pages, and the World Wide
Web distributed hypermedia network.” Id. at 14a. It
also noted that the specification “describes problems
specific to the World Wide Web.” Id. at 14a-15a. On
the basis of that analysis, the Federal Circuit “slightly
modified” the district court’s characterization of the
claims by concluding that the claims are not directed
to “‘the abstract concept of enabling interactivity with
remote objects on a client computer browser’” generally, but are directed to the concept of “interacting
with data objects on the World Wide Web.” Id. (emphasis added). With this modification, the Federal
Circuit held that the claims are directed to an “abstract idea” within the meaning of Alice. Id. at 15a.
That conclusion is unassailable: The notion of “interacting with data objects on the World Wide Web”
is purely generic and functional—even Eolas does not
purport to have invented the World Wide Web, “data
objects,” or “interactivity”—and it describes virtually
everything that happens on the Web. The “risk of pre-
20
emption” posed by such a functional claim, Alice, 573
U.S. at 217, is immediately evident. See supra 11-12
n.2. By claiming ownership of that concept, Eolas
sought to monopolize a “building block of the modern
economy.” Alice, 573 U.S. at 220.
Next, at Alice step two, the Federal Circuit considered whether the “implementation details” of Eolas’s
claims contain an inventive concept that saves those
claims from ineligibility under Section 101.
Pet. App. 15a; see id. at 18a-22a. As the court explained, two of the four purportedly inventive implementation details touted by Eolas on appeal simply do
not appear in the claims. See id. at 18a (explaining
that the claims nowhere recite the concept of relocating an “interactive content application from outside to
inside the World Wide Web browser itself”); id. at 19a20a (rejecting Eolas’s purportedly inventive alleviation of “security concerns” on the same basis). Because those features are not recited in the claims, they
cannot limit their preemptive reach, much less serve
as “inventive concept[s] that render[ ] the claims eligible under Alice step 2.” Id. at 18a.
As for Eolas’s other two supposedly inventive implementation concepts—the “concept of distributed
processing” and the concept of “viewing transformations”—the Federal Circuit explained that those
concepts, as described in the asserted claims of the
’507 patent, are purely generic and conventional. Id.
at 18a-21a. It was “undisputed” that “at the time of
the invention, distributed processing was well-understood, routine, conventional activity.” Id. at 18a. And
the distributed processing recitations of the asserted
claims do “not specify how the claimed configuration
for distributed processing is any different than generic distributed processing.” Id. at 19a. The claims
21
“merely describe a desired function or outcome”—the
splitting-up of computing tasks across multiple computers—“without providing details of the claimed distributed processing,” i.e., “how the processing is distributed among the distributed application computers.” Id. (emphasis added). Likewise, the “‘viewing
transformations’” limitation recited in claim 45 of the
’507 patent broadly means “‘operations performed on
data for visual display to a user,’” which “encompasses
visual display generally, something well-known in the
art at the time of the invention.” Id. at 20a-21a (citation omitted). And nothing else “in the claim or the
specification show[s] how the recited viewing transformation differs from conventional visual display.”
Id. at 21a. Thus, that purportedly inventive concept
“fails to transform the abstract idea into an eligible
technical solution.” Id.
The Federal Circuit’s reasoning at step two, like
its reasoning at step one, was faithful to this Court’s
decision in Alice. As this Court has explained, where
an otherwise abstract patent claim incorporates implementing steps that merely “require a generic computer to perform generic computer functions,” it does
not claim an eligible invention. Alice, 573 U.S. at 225.
The two implementing concepts that Eolas identified
on appeal and that are actually claimed in the ’507
patent—distributed processing and viewing transformations—are “purely functional and generic” concepts requiring only generic computers. Id. at 226.
The Federal Circuit was therefore correct in holding
that the “alleged inventive concepts identified by Eolas do not otherwise transform the abstract nature of
the claims to render the claims patent-eligible.”
Pet. App. 21a.
22
B. Eolas Fails To Identify Any Error
Warranting Certiorari
Eolas’s petition does not deny that the Federal Circuit accurately stated the Alice test and sought to apply it to the ’507 patent claims. Most of the arguments
presented in the petition pertain to the manner in
which the Federal Circuit has resolved other Section
101 cases. See Pet. 18-21, 24-31. When it comes to
the Federal Circuit’s reasoning in this case, the petition has little to say. What little it does say fails to
establish any error warranting this Court’s review.
1. As to the Federal Circuit’s analysis at Alice
step one, Eolas posits that “[e]nabling interactivity
with data objects on the World Wide Web does not fall
squarely within the realm of ‘abstract ideas.’” Pet. 34.
Eolas offers no support for that argument other than
a rhetorical assertion that “interacting with data objects on the World Wide Web is not an abstraction—it
is a physical activity that millions of real people do
with real browsers on that real computer network
every day.” Id.
That argument fails. Every abstract idea has concrete applications in the real world. The abstract
ideas addressed in Benson and Flook certainly had
real-world applications: the patents in those cases
were directed to computing functions that had tangible applications in real-world computers. See Flook,
437 U.S. at 586; Benson, 409 U.S. at 67. The patentees in those cases emphasized that their claims were
patent-eligible precisely because they had real-world
applications. See, e.g., Respondent’s Br. 6, Parker v.
Flook, 437 U.S. 584 (1978), 1978 WL 223450. And in
Alice, the claims recited specific, “tangible” computer
system components with real-world applications, but
23
this Court explained: “The fact that a computer ‘necessarily exist[s] in the physical, rather than purely
conceptual, realm,’ is beside the point.” 573 U.S. at
224 (alteration in original) (citation omitted). Time
and again, this Court has rejected Eolas’s appeal to a
concrete application.
Thus, the question at Alice step one is not whether
the concept of “interacting with data objects on the
World Wide Web” has practical applications or employs physical components; the question is whether
monopolization of that result would preempt other inventors from exploiting the “‘basic tools of scientific
and technological work.’” Id. at 216 (citation omitted).
Eolas’s petition offers no reason why the abstract idea
of “interacting with data objects on the World Wide
Web” is not a basic tool of technological work.
Indeed, Eolas does not hide from the preemptive
effect of its claims; it boasts of it. Eolas asserts that
“interacting with data objects on the World Wide
Web” forms the essential basis for countless “technologies we use every day,” all of which have become “an
indelible feature of the U.S. social and economic landscape.” Pet. 34-35; supra 11-12 n. 2. But the ubiquitous concept of “interacting with data objects on the
World Wide Web” is not patent-eligible unless it is
joined to and limited by a specific “‘inventive concept’”
that transforms the “claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). And that inquiry takes place at Alice
step two. Id.
2. At Alice step two, Eolas’s petition is conspicuously silent on the central point of the Federal Circuit’s analysis. Eolas never rebuts the Federal Circuit’s conclusion that the inventive concepts posited
by Eolas are all conventional and generic computer
24
functions. Eolas acknowledges, for instance, the Federal Circuit’s determination that the “distributed
computing” elements of Eolas’s claims are “routine
and conventional.” Pet. 33. But it offers no real explanation in its petition for why that determination
was wrong. Instead, Eolas offers four scattered critiques that misstate the Federal Circuit’s Alice step
two analysis.
First, Eolas repeatedly asserts that “the Federal
Circuit’s own description of the ’507 patent” indicates
that its “claims are drawn to useful improvements to
computer network technology” merely because the
“Federal Circuit confirmed that the patent ‘describes
problems specific to the World Wide Web’” and “‘explains how the invention purports to solve them.’” Id.
at 19 (quoting Pet. App. 14a-15a); see also id. at i, 2,
31. This mischaracterizes the Federal Circuit’s reasoning. The Federal Circuit recognized that Eolas’s
claims “are not directed to computers, networks, or interacting with content generally,” but more narrowly
“recite interacting with content on the World Wide
Web.” Pet. App. 14a. But the mere fact that Eolas’s
claims recite the “configuration requirements of a
World Wide Web browser, World Wide Web pages,
and the World Wide Web distributed hypermedia network,” Pet. 19 (quoting Pet. App. 14a), hardly establishes that Eolas’s claims are drawn to “improv[ing]
an existing technological process,” id. (emphasis
added) (quoting Alice, 573 U.S. at 223). That a set of
claims “recite[s] ‘specific hardware’ configured to perform ‘specific computerized functions’” is not enough
to support patent eligibility if those limitations are—
as here—“purely functional and generic,” Alice, 573
U.S. at 226 (citation omitted); see Pet. App. 18a-21a.
And here Eolas has not actually challenged the
25
Federal Circuit’s conclusion that Eolas’s claims rely
on purely conventional computer functions. See
Pet. App. 17a-18a.
Second, Eolas contends that the Federal Circuit
was somehow foreclosed from determining that Eolas’s claims are conventional at Alice step two because, at an earlier stage of the litigation, the district
court rejected respondents’ argument that the asserted ’507 patent claims are unpatentable on obviousness-type double patenting (OTDP) grounds.3 See
Pet. 23-24. Eolas’s contention rests on the premise
that the district court, in its OTDP summary-judgment order, made a “finding that the claims as a
whole d[o] not recite a ‘routine’ or ‘commonplace’ implementation of the Web.” Id. at 24 (citation omitted).
That premise is false. In fact, as the district court explained, it denied respondents’ OTDP summary-judgment motion merely because it concluded that they
“had not met their burden” of proving “that the ’507
asserted claims were not ‘patentably distinct’ from
the claims in earlier patents that share the same specification with the ’507 patent,” Pet. App. 28a, 76a; see
3
To determine OTDP, a court analyzes the differences between the respective claims of the two patents and then determines whether those differences render the second set of claims
patentably distinct. See AbbVie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology Tr., 764 F.3d 1366, 1373 (Fed. Cir.
2014). A claim that is obvious over or anticipated by another
claim is not patentably distinct. Id. at 1373-74. At summary
judgment, respondents argued that because the claims in Eolas’s
’507 patent are directed to the same invention as the claims Eolas presented in its predecessor patents, and because any slight
differences in the ’507 claims are, at most, obvious modifications
of the claims in Eolas’s predecessor patents, the ’507 claims are
invalid. See Mot. Summ. J., Eolas Techs. Inc. v. Amazon.com,
Inc., No. 17-cv-3022 (N.D. Cal. Mar. 25, 2020), Dkt. 592.
26
Order Denying Mot. Summ. J. 11, 14-16, Eolas Techs.
Inc. v. Amazon.com, Inc., No. 17-cv-3022 (N.D. Cal.
Apr. 27, 2021), Dkt. 655. There was no conflict between the district court’s summary-judgment decision
on OTDP and the Federal Circuit’s later Section 101
conclusion—based on “undisputed” record evidence—
that the concepts recited in the asserted claims of the
’507 patent are “routine” and “conventional.”
Pet. App. 18a.
Third, and more broadly, Eolas accuses the Federal Circuit of “import[ing] other statutory sections on
patentability into Section 101.” Pet. 21. But the Federal Circuit nowhere did that. Rather, it did exactly
what this Court directed in Alice. For instance, while
Section 112 permits “functional” words to be used in
claims, Pet. 32, this Court’s patent-eligibility precedents—going back to Morse—do not permit functional
claiming divorced from the way in which that function
is achieved. See Morse, 56 U.S. at 112-13 (prohibiting
functional claiming of a “result” without the “process
or machinery” by which “the result is accomplished”).
Alice thus instructs that where a patent claim directed to an abstract idea recites claim elements that
are “purely functional and generic,” such elements
cannot make the claim patent-eligible. Alice, 573 U.S.
at 226 (emphasis added).4 And Alice expressly
4
In this regard, too, the reasoning in Morse and Alice is entirely consistent with the text of Section 101. Abstract ideas,
functions, and results are not “process[es]” in the first place, 35
U.S.C. § 101; they are mere aspirations that, if patented, can be
used to ensnare the hard work of real invention performed by
others in the future. A true patent-eligible “process” is a specific
way of doing something, and leaves to the innovating public and
future inventors all other ways of achieving the same result. See
27
provides that “computer functions [that] are ‘wellunderstood, routine, conventional activit[ies]’” cannot
be considered inventive at Alice step two. Id. at 225
(alteration in original) (quoting Mayo, 566 U.S. at 73).
It would have been error for the Federal Circuit to undertake its Alice step two analysis without considering whether the implementing steps of Eolas’s abstract claims rest on “purely functional” and “routine”
concepts. Id. at 225-26. It is Eolas’s argument—not
the Federal Circuit’s analysis—that is “in conflict
with Alice itself.” Pet. 4.
Indeed, Eolas’s argument is in conflict with the entire body of this Court’s Section 101 precedents. This
Court has recognized that, “in evaluating the significance of additional steps, the § 101 patent-eligibility
inquiry … might sometimes overlap” with the “later
sections” of the Patent Act—i.e., Sections 102, 103,
and 112. Mayo, 566 U.S. at 90-91. And in doing so,
Section 101 serves a crucial role in screening out patents that “impede future innovation.” Id. In effect,
Eolas would leave all of the heavy lifting to the other
sections—an argument this Court has rejected. Id. at
91 (“declin[ing] the … invitation to substitute §§ 102,
103, and 112 inquiries for the better established inquiry under § 101”). As this Court explained, “to shift
the patent-eligibility inquiry entirely to those later
sections risks creating significantly greater legal uncertainty, while assuming that those sections can do
work that they are not equipped to do.” Id. at 90. For
example, “an abstract idea that is new or groundbreaking is not any less abstract.” Pet. App. 16a. And
a patent that claims only a novel but abstract concept,
Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507
(1874); Le Roy, 55 U.S. at 175.
28
implemented by strictly conventional means, is just
as patent-ineligible as one that does not include those
implementing steps.
Finally, Eolas asserts that the decision below “expressed confusion about whether the consideration of
the arguments about improved computer functionality belonged in step one or step two,” and “hedged its
bets” by suggesting that the inventive concepts posited by Eolas “would be rejected ‘[w]hether analyzed
as technological improvements under Alice step 1 or
as inventive concepts under Alice step 2.’” Pet. 33 (alteration in original) (quoting Pet. App. 17a-18a).
But there was no confusion; the Federal Circuit’s
discussion merely tracked the arguments presented
by Eolas. As the Federal Circuit explained, Eolas relied on several purported technological improvements
to argue that the claims were non-abstract at Alice
step one, Pet. App. 16a, and also argued “[i]n the alternative” that those same “aspects … would render
the claims eligible under Alice step two,” id. at 17a.
For its part, the Federal Circuit correctly recognized
that the “implementation details” of a claim otherwise
directed to an abstract idea are “best left for consideration under Alice step two.” Id. at 15a. And it correctly analyzed at “Alice step two” all of the purportedly inventive concepts advanced by Eolas. Id. at 18a21a. That the Federal Circuit also concluded that
those same concepts do not qualify as “technological
improvements under Alice step 1,” id. at 17a, is a testament not to the Federal Circuit’s “confusion” but rather the shape-shifting nature of Eolas’s arguments
and the ultimate absence of any technological advance in Eolas’s claims.
29
II. Eolas Has Shown No Reason To Revisit
Alice In This Case
The Federal Circuit’s case-specific application of
Alice in a unanimous, nonprecedential opinion does
not warrant certiorari. And so Eolas seeks to augment its petition by arguing that Section 101 jurisprudence is in a state of general crisis. See Pet. 18.
Eolas is wrong. Empirical data show that Section 101
jurisprudence is one of the most predictable areas of
patent law, and there is no evidence that Alice and its
progeny have impaired investment in innovation in
the United States.
A. Much of the commentary cited by Eolas does
not evidence actual “confusion” about Section 101
case law; rather, it reflects that some commentators
simply disagree with Alice itself. See, e.g., id. at 18,
29 (citing Shahrokh Falati, To Promote Innovation,
Congress Should Abolish the Supreme Court Created
Exceptions to 35 U.S. Code § 101, 28 Tex. Intell. Prop.
L.J. 1, 38-39 (2019)); Pet. 21 (citing Richard Gruner,
Lost in Patent Wonderland with Alice: Finding the
Way Out, 72 Syracuse L. Rev. 1053, 1079 (2022)); Patent Eligibility Restoration Act: Hearings on S. 2140
Before the Subcomm. on Intell. Property, 118th Cong.
(Jan. 23, 2024) (statement of Hon. David Kappos at
7)5 (arguing that the Alice framework “disincentiviz[es] investment and innovation”).
In fact, the Federal Circuit, the federal district
courts, and the PTO have had little trouble
predictably applying Alice. The most recent and
comprehensive empirical study of the Federal
5
https://www.judiciary.senate.gov/imo/media/doc/2024-0123_-_testimony_-_kappos.pdf.
30
Circuit’s jurisprudence shows that, if anything,
Section 101 is among the most consistent and
predictable areas of modern patent law. See Nikola
L. Datzov & Jason Rantanen, Predictable
Unpredictability 43, Univ. of Iowa Legal Studies
Research
Paper
No.
2024-04
(2023),
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=
4380434 (forthcoming Iowa L. Rev.). Specifically, the
Federal Circuit affirms district courts in 84.9% of all
Section 101 cases; and the PTO’s Section 101
affirmance rate at the Federal Circuit is even higher
(95.5%). Id. at 41-42. That is “the highest affirmance
rate of any patent law issue tracked over a continuous
period of time,” and it is a notably higher rate of
affirmance than the Federal Circuit’s overall districtcourt affirmance rate (69%).
Id. at 43-44.
Furthermore, the rate of dissent on Section 101 issues
at the Federal Circuit is unusually low. Between
2012 and 2022, only 6.5% of Section 101 cases at the
Federal Circuit featured a dissent, whereas 8.1% of
all patent cases at the Federal Circuit featured a
dissent. Id. at 58. This “provides further evidence
that patent eligibility … [i]s actually more predictable
than other areas of patent law.” Id.
To be sure, the judges of the Federal Circuit—
especially the members of the panel below—do not
hesitate to pen vigorous dissents in cases of disagreement about Section 101. Id. at 60 (observing that
Judges Bryson and Stoll are among the court’s most
frequent dissenters in Section 101 cases); see e.g., IBM
Corp. v. Zillow Grp., Inc., No. 22-1861, 2024 WL
89642, at *6 (Fed. Cir. Jan. 9, 2024) (Stoll, J., concurring-in-part, dissenting-in-part). Notably, too, Judge
Stoll—who wrote the panel opinion affirming the district court’s judgment below—is more likely than any
31
other Federal Circuit judge to vote to reverse Section
101 ineligibility rulings. See Datzov & Rantanen,
supra, at 43; see also, e.g., Visual Memory LLC v.
NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017).
That fact only highlights why this case is a poor vehicle for revisiting Alice: The district court and the Federal Circuit panel unanimously agreed that Eolas’s
claims are ineligible.
B. Eolas argues also that current Section 101 doctrine “threatens domestic investment and innovation
while affording a competitive advantage to countries
like China.” Pet. 30-31. That assertion is unsubstantiated. Alice merely restated the same “implicit exception” to Section 101 for “[l]aws of nature, natural
phenomena, and abstract ideas” that this Court has
recognized “for more than 150 years,” stretching back
to before the invention of the telegraph. 573 U.S. at
216; see Morse, 56 U.S. at 113. Far from burdening
America’s preeminence in technological innovation,
Alice has protected it by protecting the innovating
public’s right to achieve the same results as those
claimed by a patent but in different, better, faster and
less expensive ways. America’s innovative edge is as
strong as ever. See National Academies of Sciences,
Engineering, & Medicine, Protecting U.S. Technological Advantage (2022), https://nap.nationalacademies.org/
catalog/26647/protecting-us-technological-advantage;
Beethika Khan et al., National Science Board, Science
and Engineering Indicators: The State of U.S.
Science and Engineering at 13 (Fig. 24) (2020),
https://ncses.nsf.gov/pubs/nsb20201 (showing that, in
2018, the United States accounted for 32% of valueadded global output in R&D-intensive industries,
such as pharmaceuticals and software publishing).
32
Contrary to Eolas’s conclusory assertion that Alice
has led “investors to shift their ‘investments away
from companies that [are] developing new software,’”
Pet. 18 (alteration in original) (quoting Falati, supra,
at 38-39), rigorous empirical analysis indicates that
Alice has had “no apparent effect on the receipt of investment or on subsequent acquisitions and initial
public offerings (IPOs)” for software developers.
James Hicks, Do Patents Drive Investment in Software?, 118 Nw. U. L. Rev. 1277, 1283-84 (2024). The
crisis painted by Eolas is an illusion.
III. This Case Is A Singularly Bad Vehicle For
Revisiting Alice
Even if there were a pressing need for this Court
to revisit Alice, this is not the case for it. The Federal
Circuit’s resolution of this case did not depend on any
controversial interpretation of Alice. Nor did it depend on some general proposition about problems
with computer- or Web-related patents. Rather, it
rested on the Federal Circuit’s understanding of the
relevant claim language as involving only generic concepts with no improvement in computer technology.
Based on the Federal Circuit’s understanding of the
claims, there is no principle by which Eolas could prevail here. Indeed, Eolas puts forward no such principle by which “interacting with content on the World
Wide Web,” without any specific technological improvement in that interaction, is not abstract.
Nor does Eolas ask this Court to change Alice’s
two-part test or to provide additions or exceptions to
that test. And while Eolas asks for “clarification,” Pet.
4-5, it provides virtually no detail as to what that clarification should entail. That is because no form of
33
clarification would save the asserted patent claims,
which are abstract under well-established principles.
Eolas’s argument thus rests on the assertion that
the Federal Circuit simply misunderstood Eolas’s patent claims. That argument is a case-specific one that
provides no basis for certiorari. As discussed above,
supra at 20-21, the Federal Circuit considered the
four supposedly inventive concepts Eolas raised below. Two do not actually appear in the ’507 patent
claims, Pet. App. 18a-20a, of which one was not even
presented to the district court, see id. at 18a. The
other two—the “concept of distributed processing”
and the concept of “‘viewing transformations’”—are
purely generic and conventional. Id. at 18a-21a. Eolas barely addresses this reasoning in its petition.
Thus, contrary to Eolas’s petition, the “computerrelated improvements” that Eolas has posited are neither “squarely raised” nor “cleanly presented.”
Pet. 31.
Finally, if the Court were to seek an opportunity
to revisit more than 150 years of consistent precedent
on the question of patent eligibility, it should await a
case (unlike this one) where the issue is better presented, where there is at least some lower-court disagreement about the outcome, and where the preemptive risk to American commerce and innovation is far
less extreme.
34
CONCLUSION
The petition for a writ of certiorari should be denied.
Respectfully submitted,
GABRIEL K. BELL
DOUGLAS E. LUMISH
RICHARD G. FRENKEL
Counsel of Record
JOSEPH H. LEE
CHARLES S. DAMERON
AMIT MAKKER
LATHAM & WATKINS LLP
LATHAM & WATKINS LLP
555 11th Street, NW
140 Scott Drive
Suite 1000
Menlo Park, CA 94025
Washington, DC 20004
(202) 637-2200
gabriel.bell@lw.com
Counsel for Amazon.com, Inc.
DAVID A. PERLSON
DEEPA ACHARYA
QUINN EMANUEL
QUINN EMANUEL
URQUHART & SULLIVAN
URQUHART & SULLIVAN
LLP
LLP
50 California Street
1300 I Street NW
22nd Floor
Suite 900
San Francisco, CA 94111 Washington, DC 20005
Counsel for Google LLC
MARK C. FLEMING
BIJAL V. VAKIL
ALLEN OVERY SHEARMAN
WILMER CUTLER
PICKERING HALE AND
STERLING US LLP
DORR LLP
1460 El Camino Real
60 State Street
2nd Floor
Boston, MA 02109
Menlo Park, CA 94025
Counsel for Walmart, Inc.
July 31, 2024
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.