Encyclopedia Britannica, Inc. v. Dickstein Shapiro, LLP

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
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EN CYCLOPAEDIA BRITANNICA, INC., )
)
Plaintiff, )
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v. ) Civil Case No. 10-454 (RCL)
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DICKSTEIN SHAPIRO LLP, )
)
Defendant. )
)
)
MEMORANDUM OPINION
The patents at issue in this case cover multimedia systems for retrieving textual and
graphical information. The question before the Court is whether these claims are patent eligible
under 35 U.S.C. § 101 , or are instead drawn to a patent-ineligible abstract idea. The parties agree
that the § 101 issue is properly before the Court and may be addressed pursuant to a motion for
judgment on the pleadings under Rule 12(0).
1. BACKGROUND
A. Procedural History
In 2006, plaintiff Encyclopaedia Britannica, Inc. (“EB”) sued several companies for
alleged infringement of United States Patent Nos. 7,051,018 (the “ ‘018 patent”) and 7,082,437
(the “ ‘437 patent”). Compl. 1] 7. Both patents were held invalid in Texas District Court because
of a previously unnoticed defect in an earlier patent application filed in 1993. Id. 311] 10-11 & Ex.
B. EB then sued Dickstein Shapiro, the law firm that had prosecuted the 1993 application on EB’s
behalf before the Patent and Trademark Office (“PTO”), for malpractice. EB contends that but for
the defect in the 1993 application, the “018 and ‘437 patents would have been valid and that it
would have won its infringement case. This Court has previously held that under the “case-within—
a-case” principle that governs malpractice claims, EB must prove the merits of its underlying
patent claims in order to show that the alleged malpractice actually caused it some injury.
Encyclopaedia Britannica, Inc. v. Dickstein Shapiro LLP, 905 F. Supp. 2d 150, 153-54 (D.D.C.
2012). Accordingly, the parties have briefed issues relating to claim construction and questions of
validity under 35 U.S.C. § 112.
While those issues have remained pending, there have been developments in patent law
that Dickstein Shapiro alleges are “fatal” to EB’s malpractice claim, regardless of how the disputed
claim terms are construed. In Alice Corporation Party Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014), the Supreme Court held that claims directed to abstract ideas are not eligible for
patent protection under § 101 , and that “mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent—eligible invention.” Id. at 2358. Dickstein Shapiro
argues that applying the principles set foflh in Alice, “the asserted claims of the ‘437 and ‘018
patents are invalid as a matter of law because they merely recite computerized implementation of
abstract ideas.” Def.’s Mem. in Supp. of Mot. for J. on the Pleadings Based Upon Lack of Patent-
Eligible Subject Matter (“Def.’s Mot”) at 2. If true, EB cannot prove the case-within-a-case, and
Dickstein Shapiro is entitled to judgment on the pleadings. See, e.g., Content Extraction &
Transmission LLC v. Wells Fargo Bank, NA, 776 F.3d 1343, 1349 (Fed. Cir. Dec. 23, 2014)
(affirming district court’s ruling on § 101 issues based solely on the pleadings, without claim
construction, discovery, or expert reports).
always meant. Because the underlying case is governed by § 101, it is appropriate for this Court
to apply the Supreme Court’s construction of § 101 as set forth in Alice.
Indeed, Jacobsen itself explicitly found that while subsequent decisions are not binding on
a court’s assessment of the state of the law when considering a trial—within-a—trial, “later decisions
do help to illuminate the state of the law at the time, particularly when, as here, the subsequent
jurisprudence further clarifies a long-standing rule rather than overturns, alters, or undermines it.”
Jacobsen v. Oliver, 451 F. Supp. 2d 181, 196 n.4 (D.D.C. 2006). “Subsequent case law helps
explain what ‘should have happened.’” Id. (citing 4 Legal Malpractice § 33.9).
Furthermore, applying the law as it is currently understood is the only plausible option
given the facts of this litigation. EB’s argument rests on the premise that if the Texas District Court
had not dismissed the underlying litigation at the summary judgment stage in August 2009, it
would have proceeded to resolve the § 101 issue at that time based on the case law then in
existence. But it is impossible to know exactly when the court would have addressed the § 101
issues had it not granted summary judgment on other grounds. As of August 2009, there had been
no claim construction and no significant discovery in the underlying Texas litigation. See Dockets
1:06-cv—578 and 1:07-cv-787 (showing no discovery schedule or claim construction). Final
resolution of the case may have taken years, as is typical in this type of case. See, e. g., Alice, 134
S. Ct. at 2353 (seven years between initial filing and resolution by the Supreme Court);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (over five years between initial
filing and final resolution by the Federal Circuit). Because the Court cannot know when the § 101
issue would have been finally adjudicated, the only rule that makes sense in this context is to apply
the objectively correct legal standard as enunciated by the Supreme Court in Alice, rather than an
incorrect legal standard that the Texas District Court may have applied prior to July 2014.
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B. Applying Alice
1. Step One
The Court first must determine whether the claims at issue are directed to a patent-
ineligible concept, and concludes that they are: These claims are drawn to the abstract idea of
collecting, recognizing, and storing data to be easily found and retrieved.
The “abstract ideas” category embodies “the longstanding rule that an idea of itself is not
patentable.” Alice, 134 S. Ct. at 2355 (quotations and citations omitted). Examples of ideas that
the Supreme Court has found too abstract to be patentable are fundamental economic principles,
Bilskz', 561 US. at 593, and methods of organizing human activity, Alice, 134 S. Ct. at 2356.
The claims of the ‘437 patent recite the steps of (l) storing textual and graphical
information in a database; (2) providing a plurality of “entry paths” to search through the stored
3’ “
information, including “textual browse, textual search,” and “graphical search entry paths;” (3)
retrieving textual or graphical information based on the input in one of the entry paths; and (4)
further retrieving “associated” graphical information in response to user input associated with an
indicator in retrieved graphical information. In other words, the claims are directed to the concept
of organizing and storing information in a database, searching for information in the database, and
retrieving information from the database.
This abstract concept of collecting, recognizing, and storing data is not patent-eligible. A
“database” is nothing more than an organized collection of information. Humans have been
collecting and organizing information and storing it in printed form for thousands of years. Indeed,
encyclopedias—described as a type of “database” in the specification—have existed for thousands
of years. For just as long, humans have organized information so that it could be searched for and
retrieved by users: For example, encyclopedias typically are organized in alphabetical order and
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are searchable using indexes, and articles generally contain cross-references to other articles on
similar topics. These activities long predate the advent of computers. Such fundamental human
activities are “abstract ideas” beyond the scope of § 101.
Likewise, the ‘018 claims recite the steps of (1) displaying a map on a display screen and
changing the portion of the map being displayed in response to user input, (2) displaying “place
indicators” on the map indicating the location of a place and the availability of associated text
information and then displaying the associated input in response to user input (allowing users to
look up information about places marked on a map), and (3) providing “text search” and “text
browse” features that allow a user to select a place and then display the portion of the map showing
the location of that place (or find a place on a map). These are also essentially variations of
activities humans have performed for thousands of years using paper maps and other reference
works, and are thus abstract ideas. For example, atlases often provide several maps displaying the
same place, but with differing scales in order to show varying degrees of detail. These maps are
cross-referenced to help a person change the scale of the map being shown, depending on his
needs. Atlases and encyclopedias also provide indexes that allow a person to choose a place and
then locate either a map showing the location of that place or textual information about that place.
Like the claims of the ‘437 patent, the claims of the ‘01 8 patent are directed to an abstract idea.
The abstract ideas set forth in this patent are comparable to the concept of collecting,
storing, and retrieving data found patent-ineligible in several recent cases. See, e.g., Content
Extraction & Transmission LLC v. Wells Fargo Bank, NA, 776 F.3d 1343, 1347 (Fed. Cir. Dec.
23, 2014) (invalidating patent claims “drawn to the abstract idea of l) collecting data, 2)
recognizing certain data within the collected data set, and 3) storing that recognized data in a
memory” because “[t]he concept of data collection, recognition, and storage is indisputably well-
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known. Indeed, humans have always performed these functions”); Bascom Research, LLC v.
LinkedIn, Inc, 77 F. Supp. 3d 940, 949 (ND. Cal. Jan. 5, 2015) (invalidating claims describing
“the abstract idea of creating, storing, and using relationships between objects” because “the
concept of establishing and using relationships between documents is a common, age-old
practice”); Amdocs (Israel) Ltd. v. Openet T elecom, Inc, 56 F. Supp. 3d 813, 823 (ED. Va. 2014)
(“[S]toring and querying information in a database, and building reports based on that information,
is one of the most basic functions of a database system.”); Cogent Med, Inc. v. Physicians
Interactive Holdings, Inc, 70 F. Supp. 3d 1058, 1063~64 (N.D. Cal. 2014) (invalidating claims
directed to “the abstract idea of maintaining and searching a library of information and that “[t]his
idea is little different than the basic concept of organizing a physical library so that an individual
can search for information by going to the relevant portion of the library and picking a book.”).
The abstract concept of collecting, storing, and retrieving data simply is not patent—eligible.
Furthermore, in opposition to Dickstein Shapiro’s assertion that the claims at issue are
directed to an abstract idea, EB argues only that the patents survive § 101 scrutiny because they
are directed to improving the functionality and operability of a computer itself. However, the Court
finds—as did the Supreme Court—that this argument is irrelevant at this step of the inquiry. See
Alice, 134 S. Ct. at 2359 (considering whether the claims “purport to improve the functioning of
the computer itself” as part of the second step of the § 101 inquiry). EB offers no other challenge
to Dickstein Shapiro’s position that the claims are abstract.1
2. Step Two
‘ EB’s argument also sets forth apparent estoppel arguments at various points, notwithstanding this Court’s Opinion
of November 26, 2012, ECF No. 64. EB asserts that Dickstein Shapiro’s present assertions should be rejected based
on previous statements made in PTO filings. However, the Court already rejected this argument, finding no basis for
the application of judicial estoppel based on statements that Jon Grossman made to the PTO on behalf of EB in his
capacity as EB’s attorney. ECF No. 64 at 6-1 1. Additionally, to prove its case~within-a—case, EB must rely on evidence
that would have been admissible in the underlying case. In the underlying case, EB could not have established that its
patents were valid simply by arguing its lawyers said they were valid.
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Because the claims at issue are directed to the abstract idea of collecting, storing, and
retrieving data, the Court must turn to step two and “examine the elements of the claim to
determine whether it contains an inventive concept sufficient to transform the claimed abstract
idea into a patent—eligible application." Alice, 134 S. Ct. at 2357 (quotation marks and citations
omitted). Transformation into a patent-eligible application requires “more than simply stating the
abstract idea while adding the words ‘apply it.m Id. (brackets and citations omitted).
The ‘437 does not contain such an “inventive concept.” The patent claims include hardware
limitations—specifically, the use of a “computer” and “computer-readable medium.” While the
parties disagree about the precise scope of these terms, even the narrowest construction hardly
provides any real limitation. The patent also requires that the database be searchable by textual
browse entry paths, textual search entry paths, and graphics entry paths, as described earlier. But
these requirements simply describe various methods by which humans have organized and
searched for information for hundreds if not thousands of years. The “textual browse” entry path
is functionally equivalent to using an index to search a printed reference work. The “textual search”
feature is no different than a person scanning the text of a book to find a particular term each time
it appears. Obviously, a computer can perform this task much quicker than a human, but that is not
sufficient to render the idea patentable. See CLS Bank Int ’1 v. Alice Corp. Pty. Ltd, 717 F.3d 1269,
1286 (Fed. Cir. 2013) (en banc plurality opinion of Lourie, J.) (“[S]imp1y appending generic
computer functionality to lend speed or efficiency to the performance of an otherwise abstract
concept does not meaningfully limit claim scope for purposes of patent eligibility”). Not only
have humans long used these methods of categorizing and searching information, but the patent
itself suggests that textual browsing and searching were conventional methods of searching
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databases used in prior art. See ‘437 Patent at l:49—2:9 (describing textual browse and search entry
paths in Grolier CD-ROM~based encyclopedia).
The patent does not define the term “graphical search,” but it gives examples that explain
what this concept means. It explains that the “Picture Explorer” entry path accesses information in
three ways: “(1) by allowing a user to randomly browse through a collection of pictures, (2) by
displaying a list of captions and enabling a user to select corresponding pictures, or (3) by allowing
a user to enter a description of the picture which then triggers the entry path to automatically search
the terms of that description for corresponding picture captions.” ‘437 Patent at 715-12. The first
of these modes, randomly browsing through pictures, is no different than a person flipping through
the images in a print encyclopedia. The second and third modes are simply versions of the textual
browse and textual search functions where the search is limited to picture captions rather than the
entire text.
Finally, the claims also require the use of “indicators” that inform users when there is
“associated” graphical or textual information and allow the user to retrieve that information. This
form of cross-referencing has long been a feature of print encyclopedias. See Bascom, 77 F. Supp.
3d 940 (“[T]he concept of establishing and using relationships between documents is a common,
age-old practice”). The prior art cited in the patent also demonstrates that the use of indicators
(such as icons) is a routine and conventional method of linking one item to another for retrieval.
In sum, the claims of the ‘437 patent direct a user to utilize the computer to perform
“routine, conventional” organization, storage, search, and retrieval functions described “at a high
level of generality.” Ultramercial, 772 F.3d at 715-16. Simply describing routine computer
functions does not provide the required “inventive concept.”
l6
Nor do the limitations of the ‘018 patent provide an “inventive concept.” The claims at
issue essentially direct a user to utilize computer processes to perform tasks that a person could do
with an atlas or other reference work. As stated above, the step of “changing the portion of the
map displayed on the display screen in response to user input” is analogous to a person using the
cross-references in an atlas to flip from one map of a place, to another map of that place showing
more or less detail. Again, the specification notes that displaying a map on a screen and allowing
the user to change the portion being displayed was well-recognized at the time of the claimed
invention. See ‘018 Patent at 1:56-59 (“For example, The World GeoGraph computer program
provides a graphics based atlas exploration program where a user can search through multiple
layers (each layer having a greater degree of detail) of an on-screen map.”)).
For the same reasons, using “indicators” to show the position of a place on a map and
indicate the availability of further information about the place is not an inventive concept. Printed
maps commonly include symbols indicating the position of important places on maps which can
easily be looked up in an index for further information.
Finally, the patent describes finding places on a map using the “text searc ” and “text
browse” features. For the same reasons these features did not provide an inventive concept in the
‘437 patent, they do not provide an inventive concept here. Searching and browsing are routine,
conventional computer functions, and here they are used solely as the computer equivalent of
looking up a place in the index of an atlas and then turning to the correct page.
Like the ‘437 patent, the ‘01 8 patent has some hardware limitations as it requires the use
of a “computer,” a “computer readable storage medium,” and a “display screen.” But as discussed,
these generic computer components are insufficient to transform an abstract idea into patent-
eligible subject matter. See Alice, 134 S. Ct. at 23 57-60.
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Considering all the limitations together as an ordered combination, the claims here do
nothing more than instruct a user to view a map, find places on a map, and look up information
about places on the map, using conventional search and retrieval functions described “at a high
level of generality.” Ultramercial, 772 F.3d at 716.
EB argues that the patents survive § 101 scrutiny because they are “directed to improving
functionality and operability of a computer itself.” Pl.’s Opp’n at 6-7. But the claims do not purport
to describe any new computer hardware or a way of improving the performance of existing
hardware. They merely describe, in general terms, types of sofiware applications that could be run
on a computer to store, search, and retrieve information from a database. This is similar to the
claims rejected by the Federal Circuit in Content Extraction, which described software for
recognizing and extracting data from a hard copy document, and Ultramercial, which generally
described a system for distributing copyrighted content over the lntemet using advertisements as
currency. See Content Extraction, 776 F.3d at 1346-49; Ultramercial, 772 F.3d at 713-17.
Furthermore, the fact that the hardware is described in such general terms shows that these are
software claims, not improvements to the computer itself.
EB’s reliance on DDR Holdings is misplaced. The patents at issue in DDR Holdings, a rare
case in which the Federal Circuit has affirmed subject matter eligibility post-Alice, were directed
to systems and methods for generating a composite web page that would combine certain visual
elements of a “host” website with content from a third-party merchant. The idea was to combine
the logo, background color, and fonts of the host website with product information from the third-
party merchant to prevent the third-party merchant from luring away the host website’s visitor
traffic. DDR Holdings, 773 F.3d at 1248. The Federal Circuit held that unlike the claims at issue
in Alice and similar cases, these claims “do not merely recite the performance of some business
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practice known from the pre-Intemet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.” Id. at 1257. EB
argues that the patents solve a problem specifically arising in computer technology. P1.’s Opp’n at
17. But the fact that multimedia information is comprised of binary code does not change the basic
idea behind this patent, and Alice and its progeny make clear that simply adding references to
computer technology will not save a claim that, at its core, is directed to an abstract idea. As already
discussed, storing, searching, and retrieving data from a database is not a problem specific to
computers, but one humans have grappled with for centuries.
Furthermore, claims must be drawn with enough specificity that they do not preempt ever
application of the underlying concepts. See Alice, 134 S. Ct. at 2354. The claims at issue here——
unlike those in DDR Holdings—do not outline a specific way to manipulate the computer to
achieve a particular result. They simply describe in broad and generic terms particular search
functions that could be included in a software application. The potential preemptive power of such
claims are illustrated by EB’s current litigation efforts, which attempt to reach a variety of new
technologies such as satellite navigation systems.
Finally, EB argues that the claims are patentable because they constituted a technological
“break-through” or a concept previously “unimaginable.” Pl.’s Opp’n at 18. However, this
“argument misses the point. The concern of § 101 is not novelty but preemption.” Amdocs, 56 F.
Supp. 3d at 825. See also DDR Holdings, 773 F.3d at 1257 (specifically noting that the novelty of
the claims—describing a method that was previously unknown and never employed before—was
not alone sufficient to render its claims patent-eligible). Even assuming the claims at issue were
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novel, this does not make them patent-eligible under § 101: The claims at issue are simply too
broad and abstract to meet the requirements for eligibility under § 101 of the Patent Act.
IV. CONCLUSION
For the foregoing reasons, the defendant’s motion for judgment on the pleadings is
GRANTED. Because the Court finds that the claims at issue are not patent-eligible under § 101,
EB has lost the case-within-a-case it needed to prove in order to prevail on its malpractice claim.
Therefore, no further litigation is necessary and the other pending motions will be DENIED as
moot.
This case will therefore be DISMISSED. A separate order consistent with this Opinion
shall issue on this date.
Signed by Royce C. Lamberth, United States District Judge, on August 26, 2015.
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B. The Patents at Issue
Dickstein Shapiro has provided a helpful overview of the patents at issue. Because EB did
not dispute this factual summary or provide an alternative, and because the Court finds it succinct
and accurate, it is largely reproduced as follows.
The ’01 8 and ’437 patents both derive from the same original patent application and share
a common specification. As described in the body of the specification, the invention is a
computerized encyclopedia containing both textual articles and graphical images (e.g.,
photographs and charts). A user can search the encyclopedia by selecting one of several “entry
paths” from a main menu screen. For example, the “Topic Tree” entry path allows a user to browse
through a list of topics and subtopics and then retrieve articles of interest. ’437 Patent at 7:13-19.
The “Idea Search” entry path allows a user to enter terms to search for in the database, and then
generates a list of article titles relevant to the search request, from which the user can select an
article for retrieval. Id. at 6:61-65. And the “Picture Explorer” entry path allows a user to search
for pictures in the encyclopedia database, either by randomly browsing through a collection of
pictures or browsing or searching through a list of picture captions and selecting a picture for
retrieval. Id. at 7:4-12
As described in the specification, the invention also includes a “World Atlas” entry path.
Id. at 7:24—32. When this option is selected, the computer will display a map of the Western
Hemisphere. Id. at 19:19-20. The user can then zoom in on particular regions or pan the map in a
particular direction. Id. at 19:20—26. Places on the map are marked with place names (if the
“Labels” feature is turned on) and with symbols (e.g., a circle for a city or a star for a state capital)
as on a conventional map. Id. at 19:27-30, 20:54-58. The user can select a place name (e.g., by
clicking with a mouse) and retrieve a list of articles related to that place. Id. at 19:30-35. In
addition, the user can search for a place, either by browsing through a list of place names or
entering the place name in a search box to generate a list of place names. Upon selecting a place
name, a map showing that place will be displayed. 1d. at 19:60-20:14.
The specification states that other variations on the invention are possible. “More
particularly, it is contemplated that this invention can be used with any information that can be
stored in a database. While the present invention has largely been described with reference to an
encyclopaedia, other databases of published graphical or textual information could be included.”
1d. at 22:23-28.
Both patents include “method” claims, which recite a series of steps, and analogous
“system” claims, which are directed to a computer-readable medium containing software that can
perform the steps of the claimed method. EB has asserted that the claims that are infringed are
claims 29 and 30 of the ’437 patent and claims 96 and 113 of the ’01 8 patent, and these claims are
representative of the independent claims of the two patents.
Claim 29 of the ’437 patent recites:
29. A machine—implemented method for retrieving information, comprising:
storing textual information and graphical information of any type on a computer-
readable medium in at least one database;
providing a plurality of entry paths for searching at least a portion of the stored
textual and graphical information, the entry paths comprising:
at least one textual browse entry path allowing a user to select textual information
from a predetermined list of textual information;
at least one textual search entry path allowing a user to enter text to search for in
the stored textual information; and
at least one graphics entry path for graphically searching at least a portion of the
graphical information;
retrieving textual information based on input of the user in the textual browse
entry path or the textual search entry path;
providing a first indicator associated with the retrieved textual information
indicating the availability of associated graphical information;
retrieving the associated graphical information in response to input of the user
associated with the first indicator;
retrieving graphical information based on input of the user in the graphics entry
path;
providing a second indicator associated with the retrieved graphical information
indicating the availability of associated textual information; and
retrieving the associated textual information in response to input of the user
associated with the second indicator.
Claim 30 is the analogous system claim. It is directed to “[s]ofiware for retrieving information, the
software embodied on a computer-readable medium, and when executed by a computer, operable
to” perform essentially the same steps recited in Claim 29. Thus both of these claims are generally
directed toward (1) storing textual and graphical information in a database, (2) searching for
information using the different “entry paths” described, and (3) retrieving items of information
from the database.
By contrast, the ’01 8 patent focuses on maps. For example, Claim 113 recites:
113. A method of electronically using a map, comprising:
causing an image of at least a portion of a map to be displayed on a display
screen; changing the portion of the map displayed on the display screen in
response to user input;
displaying a plurality of place indicators on the display screen, wherein a specific
place indicator indicates the position of a place on the map and indicates that
fiirther information about the place is available;
displaying text information associated with a first one of the plurality of place
indicators in response to input from a user indicating selection of the first place
indicator;
providing a text search feature that allows the user to enter textual search
information to search for a first place, receive a first list of places in response to
the search, select a first place from the first list of places, and display an image of
a part of the map indicating the location of the first place in response to input
from the user; and
providing a text browse feature that allows the user to browse a second list of
places, select a second place from the second list, and display an image of a part
of the map indicating the location of the second place in response to input from
the user.
Claim 96 is the analogous system claim. It is directed to a “computerized map system,” comprising
a “computer readable storage medium” and “computer software stored on the storage medium and
operable to” perform essentially the same steps recited in Claim 118. Thus both of these claims
are generally directed toward (1) viewing a map, (2) displaying information about places on the
map based on a user’s selection of a place indicator, and (3) finding places on the map using the
“text search” and “text browse” features.
1]. LEGAL STANDARDS
A. Standard of Review
Federal Rule of Civil Procedure 12 allows a party to move for judgment on the pleadings
“[a]fter the pleadings are closed—but early enough not to delay trial.” Fed. R. Civ. P. 12. The
motion should be granted “if the moving party demonstrates that no material fact is in dispute and
that it is entitled to judgment as a matter of law.” Stewart v. Evans, 275 F.3d 1126, 1132 (DC. Cir.
2002) (internal citation and quotation marks omitted). A court reviewing a Rule 12 motion should
“accept as true the allegations in the opponent’s pleadings and accord the benefit of all reasonable
inferences to the non-moving party.” 1d. (internal citation and quotation marks omitted).
B. Section 101
Section 101 of the Patent Act defines the subject matter eligible for patent protection. It
provides: “Whoever 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. The Supreme Court “has
long held that this provision contains an important implicit exception[:] Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Ass’n for Molecular Pathology v. Myriad
6
Genetics, Inc, 133 S. Ct. 2107, 2116 (2013) (citing Mayo Collaborative Svcs. v. Prometheus Labs,
Inc, 132 S. Ct. 1289, 2116 (2012)). The Supreme Court “ha[s] interpreted § 101 and its
predecessors in light of this exception for more than 150 years.” Alice, 134 S. Ct. at 2354 (citing
Bilski v. Kappos, 130 S. Ct. 3218 (2010)). This is because laws of nature, natural phenomena, and
abstract ideas are “the basic tools of scientific and technological wor ” and “monopolization of
these tools through the grant of a patent might tend to impede innovation more than it would tend
to promote it.” Id. (citations omitted).
At the same time, courts must “tread carefully in construing this exclusionary principle lest
it swallow all of patent law.” Id. (citing Mayo, 132 S. Ct. at 1293—94). “At some level, ‘all
inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas?” Id. (quoting Mayo, 132 S. Ct. at 1293-94). “Thus, an invention is not rendered
ineligible for patent simply because it involves an abstract concept.” 1d. (citations omitted). In
applying the § 101 exception, the court must “distinguish between patents that claim the building
blocks of human ingenuity and those that integrate the building blocks into something more,
thereby transforming them into a patent—eligible invention.” Id. (brackets, quotations, and citations
omitted).
In Alice, the Supreme Court elaborated upon a test~originally set forth in Mayo—for
distinguishing patents claiming laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts. First, the court must determine whether
the claims are directed to one of those patent-ineligible concepts. If so, the court must consider the
elements of each claim both individually and “as an ordered combination” to determine whether
additional elements transform that abstract idea into a patent-eligible invention. Alice, 134 S. Ct.
at 2355. The second step “is the search for an ‘inventive concept,’ or some element or combination
of elements sufficient to ensure that the claim in practice amounts to ‘significantly more’ than a
patent on an ineligible concept.” DDR Holdings, LLC v. Hotelscom, L.P., 773 F.3d 1245, 1255
(Fed. Cir. 2014). “[A]n inventive concept is, among other things, a new idea that solves a
recognized problem in a particular field of endeavor. Moreover, the inventive concept[] . . .
involve[s] an innovation that allowed a user of the invention to achieve a better result, rather than
a result that was achieved more quickly due to the replacement of direct human activity with a
computer.” E. Coast Sheet Metal Fabricating Corp. v. Autodesk, Inc, No. l2-cv—517—LM, 2015
WL 226084, at *9 (D.N.H. Jan. 15, 2015). See also Alice, 134 S. Ct. at 2359 (claims may, for
example, “purport to improve the functioning of the computer itself”). It is not sufficient to
“simply recite the [abstract concept] as performed by a generic computer.” Id.
The concern driving this principle is one of preemption. Alice, 134 S. Ct. at 2354; Bilski,
130 S. Ct. at 3218 (upholding the patent would “pre-empt use of this approach in all fields, and
would effectively grant a monopoly over an abstract idea”). “[A]bstract ideas are the basic tools
of scientific and technological work. Monopolization of those tools through the grant of a patent
might tend to impede innovation more than it would tend to promote it, thereby thwarting the
primary object of the patent laws.” Alice, 134 S. Ct. at 2354 (brackets, quotation marks, and
citations omitted).
III. ANALYSIS
“To prevail in its legal malpractice action under D.C. law, Britannica ultimately has to
show, among other things, that Dickstein’s actions caused it injury, i.e., that, had it not been for
Dickstein’s purported malpractice, Britannica would have prevailed in its . . . infringement suit.”
Encyclopaedia Britannica, 905 F. Supp. 2d at 153—54. “This is the so—called ‘case within a case’
or ‘trial within a trial’ showing required for malpractice suits under D.C. law.” Id. at 154.
Therefore, if the patents at issue are invalid for reasons unrelated to the alleged defect in the 1993
application—Le, if the patents are invalid because they are not directed to eligible subject matter
under § IOl—then EB cannot meet its burden of demonstrating that Dickstein Shapiro’s alleged
malpractice caused an injury to BB.
A. Proper law to apply
The parties agree that the Supreme Court’s decision in Alice altered the way courts treat
claims involving § 101, although they may disagree as to what extent. See, e. g., Pl.’s Mot. at 9;
Def’s Opp’n at 2. However, as an initial matter the Court must decide whether Alice (decided in
2014) and other post-2009 legal developments are relevant to this case.
EB argues that “[t]he standard of care by which Dickstein’s conduct must be judged and
the standard for patentability to be applied to the ‘01 8 and ‘437 patents is that which existed at the
time that summary judgment was rendered in the Texas District Court; namely 2009.” Def.’s
Opp’n at 2. This statement is half correct. EB asserts that to determine malpractice liability, “an
attorney’s conduct is to be viewed in the context of events prevailing at the time of the alleged
malpractice, not in light of subsequent developments.” Id. (citing Biomet, Inc. v. Finnegan
Henderson, LLP, 967 A.2d 662, 668 (DC. 2009)). This, as Dickstein Shapiro concedes, is
obviously true, for an attorney cannot be expected to make litigation decisions based on unknown
future legal theories. See Def.’s Reply at 4 (citing Biomet Inc. v. Finnegal Henderson LLP, 967
A.2d 662, 668 (DC. 2009) (noting that “an attorney is not expected, much less required, to
accurately predict developments in the law”). But the attorneys’ conduct is not currently before
this Court: At this stage of a case within a case inquiry, the Court instead considers simply the
whether the patents were otherwise valid.
EB finther cites Jacobsen v. Oliver, 451 F. Supp. 2d 181, 200 (BBC. 2006) as non-binding
authority for the proposition that “the law prevailing at the time of the alleged malpractice is that
which controls in the case-within-the-case malpractice context.” Id. But the “standard for
patentability” or “law prevailing at the time” is set forth in § 101, which has not changed. Alice
merely clarified how the courts should properly interpret § 101 as it applies to computer—
implemented methods. Indeed, the Supreme Court’s decision did not overrule existing law
regarding patent-eligibility: The Supreme Court has long held that abstract ideas are unpatentable,
and has interpreted § 101 and its predecessors in light of this principle for more than 150 years.
See Alice, 134 S. Ct. at 2354 (citing Bilski, 130 S. Ct. at 3218; O’Reilly v. Morse, 56 US. (15
How.) 62, 112—21 (1854); Le Roy v. Tatham, 55 US. (14 How.) 156, 175 (1853)). Alice merely
clarified how these longstanding principles should be applied to computer-implemented methods
and systems.
When the Supreme Court construes a federal statute such as § 101, that construction is an
authoritative statement of what the statute has always meant that applies retroactively. See Rivers
v. Roadway Express, Inc, 511 US. 298, 311—13 (1994) (“A judicial construction of a statute is an
authoritative statement of what the statute meant before as well as after the decision of the case
giving rise to that construction”); Harper v. Va. Dep 't of Taxation, 509 US. 86, 97 (1993) (holding
that Supreme Court decisions apply to “all cases still open on direct review and as to all events,
regardless of whether such events predate or postdate [the Court’s] announcement of the rule”);
cf. 4 Ronald E. Mallen & Allison Martin Rhodes, Legal Malpractice § 37:87 (2015) (“The
objective of a trial-within-a-trial is to determine what the result should have been (an objective
standard), not what the result would have been by a particular judge or jury (a subjective
standard”). Alice represents the Supreme Court’s definitive statement on what § 101 means—and
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