Judge Engelmayer in the Southern District of New York recently granted a motion to dismiss the complaint because the patent-in-suit is directed to patent-ineligible subject matter under 35 U.S.C. § 101. The patent is directed to a method of tracking billable time in real time on a computer. The court found the claims unpatentable because they recite the abstract concept or mental process of timekeeping for compensation and lack an inventive concept.
Realtime Tracker, Inc. v. RELX, Inc., d/b/a LexisNexis, No. 1:21-cv-8815-PAE (S.D.N.Y.).
Plaintiff Realtime Tracker sued RELX (d/b/a LexisNexis) for infringing U.S. Patent No. 8,229,810 based on the Juris Suite Timer software marketed by LexisNexis. The patent is directed to a timekeeping computer method on a task-by-task, real-time basis. Representative claim 29 recites a method for individual billable timekeeping using a computer that detects initiation of a phone call and generates a timekeeper entry box, including entries for a personal code and client identifier, that tracks time on a call-by-call basis.
The court analyzed eligibility using the Supreme Court’s two-step Alice framework. In step one, a court determines whether the claims are “directed to a patent-ineligible concept,” such as an abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). If they are, the court proceeds to step two and considers “the elements of each claim 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.
Addressing Alice step one, the court found that the claims recite the abstract concept of timekeeping for compensation. The court likened this concept to other concepts courts have found to reflect abstract ideas, such as intermediated settlement; risk-hedging; task generation in a field entailing recurrent projects; data collection, analysis and storage; and the automated process of sending reminders to clients and receiving responses. The court also recognized that humans have undertaken the task of timekeeping for client benefit for centuries.
Realtime argued that the claims were not directed to any form of recording time and, instead, recited a “specific, structured front end user interface combined with a backend computer functionality.” The court disagreed because the claims focus on the abstract idea of timekeeping through the use of generic computer parts. The court found that the claims are recited at only the broadest, functional level, without explaining how each function is accomplished, let alone providing a technical means for performing the function. See Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018).
Addressing Alice step two, the court found no inventive concept because the claimed methods can be implemented on any computer device and in software or hardware or both. The court noted that the timekeeping functions to be performed are “well-understood, routine, conventional activities previously known to the industry.” In addition, the court determined that the claims do not “invoke any assertedly inventive programming” or “require any nonconventional computer, network, or display components, or even a non-conventional and non-generic arrangement of known, conventional pieces.” See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). The court decided that a human operator could perform the claimed timekeeping, albeit at a slower pace, and merely adding computer functionality to increase speed or efficiency of the process does not confer patent eligibility.
Practice Tip: Patent Owners should avoid describing and claiming the advance over the prior art in purely functional terms that can be implemented on any computer. Instead, Patent Owners should describe and claim technical details for tangible components in the claimed system, showing that such components are technologically innovative and not generic. For computer-implemented inventions, this may include inventive programming or a specific set of computer digital structures to solve a specific computer problem.
