"Computer Display System" Patent Found Invalid under § 101

Tridim Innovations LLC sued Amazon.com, Inc. for patent infringement of U.S. Patent Nos. 5,838,326 and 5,847,709 in the U.S. District Court for the Northern District of California.  Amazon moved to dismiss TriDim's claims for invalidity under 35 U.S.C. § 101.  The District Court granted the motion to dismiss finding that the patents are directed to ineligible subject matter under section 101.  Despite the patents claiming a "computer controlled display system", such claims were found to be directed to an abstract idea that lacked any inventive concept.

Inventors from the Xerox Corporation filed the '326 and '709 patents in separate applications on September 26, 1996, and TriDim obtained assignment of the patents.  The only claims at issue here are claim 14 of the '326 patent and claims 1 and 9 of the '709 patent.

The two patents have almost identical summaries and specifications.  They both describe a three dimensional document workspace for interacting with large numbers of document objects, designed to help balance the necessary tradeoffs of rapid access, number of collections and associated documents, and available screen space.  Specifically, the patents provide a system for "hierarchically" dividing a computer workspace for documents into three areas depending on the user's "interaction rates" with certain documents: (1) "focus space" where direct interaction with a document object occurs; (2) "immediate memory space" where document objects that are in use, but not currently being interacted with are placed; and (3) "tertiary space" where many document objects that are not currently in use are placed.  In the specification, the patentee analogizes these spaces, respectively, to (1) a "desk" where documents in use are placed, (2) a space behind the desk where objects are depicted as "smaller in size" as they get a further "distance back (i.e. in the z-direction)," and (3) a "bookshelf" for items not currently in use.

Each of the asserted claims describes a "computer controlled display system" with these features.  For example, claim 14 of the '326 patent, which is typical of the asserted claims in both patents, covers:

1.  A computer controlled display system for displaying document objects in a three-dimensional document workspace on a display, said computer controlled display system comprising:
    document receiving means for receiving document objects;
    positioning means for receiving user input for positioning document objects within said three-dimensional document workspace;
    workspace display circuitry for generating display information for displaying said three-dimensional document workspace and said document objects, said workspace display circuitry comprising:
    circuitry for displaying a focus space, said focus space for detail display of a document object;
    circuitry for displaying an immediate space, said immediate space for ephemeral positioning of document objects that are in use but not in focus; and
    circuitry for displaying a tertiary space, said tertiary space for positioning document objects that are not in use.

The District Court noted that the patents do not involve special software or hardware of any type, and that the specification describes that the system and gestures can be used on a "Silicon Graphics workstation," as this system "provides for generating software programs which manipulate graphical objects in a three dimensional space, so description of programming techniques for rendering graphical objects in a three dimensional space is not deemed necessary".

In addition, the patents state that a person of skill in the art could implement the invention on any commercially available computer with the functionality for manipulating graphical objects in a three dimensional space.

Amazon contended that the patents are invalid under 35 U.S.C. § 101, as applied in Alice Corp. Pty. Ltd v. CLS Bank Int'l, 134 S.Ct. 2347 (2014).  According to Amazon, the asserted claims are directed to the abstract idea of "retrieving and arranging documents," and fail to recite any additional elements that transform the claims into patentable subject matter.

Abstract Idea?

In Alice, the Supreme Court set out a two-part test for determining whether a claim is patent-eligible.  The Court must first "determine whether the claims at issue are directed to a patent-ineligible concept."  For computing-related functionality, the inquiry at this first step asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool.

The District Court found that the claims are drawn to the very basic concept of retrieving and arranging documents based on frequency of use.  Despite the repeated use of the word "circuitry," no such circuitry is disclosed in the patents.  The claims in question here are defined only in terms of their functions, which are directed to the abstract idea of retrieving and arranging documents by relative frequency of use.

TriDim emphasized that the patents are "directed to a computer user interface," but did not explain why or how this label transforms the abstract idea into a patent-eligible invention.

TriDim also argued that the limitation of dividing a computer display into three spaces confines the invention to a specific system and method and consequently is not an abstract idea.  But the District Court stated "[t]his is mere window dressing" as the patents themselves analogize the "immediate memory" and "tertiary" spaces to a "desk" and a "bookshelf."  This shows that the patents represent nothing more than the abstract idea of placing more frequently used documents in a space that is more easily accessible -- an organizational system people intuitively use in a variety of contexts.

As a final defense, TriDim contended that the patents are not directed to an abstract idea, because the claims were necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.  The District Court dismissed this argument as being misplaced since such reasoning is considered under the second prong of the Alice test, addressing whether there is "an inventive concept".

Inventive Concept?

If a patent is directed to a patent-ineligible concept, then the second step of the Alice test requires the Court to search for an "inventive concept" that may save the patent.

The District Court found that neither the problem Tridim's patents purportedly solve (limited screen space for the display and organization of documents) nor the suggested solution (arranging documents by frequency of use) is "necessarily rooted in computer technology."  In contrast, the District Court contended that storing documents that are less frequently used in a library or on a bookshelf as opposed to on one's desk is a common solution to a common problem of limited space in physical offices everywhere, and that it is hard to picture any office, dorm room, or workspace since the advent of the printing press that did not follow this basic concept of organization.  And since by TriDim's own admission, the patents were "specifically intended to be used with a typical computer," applying a "commonplace" method of organization to a typical computer does not constitute an inventive concept.

The District Court also found that the elements of the claims that relate to the means of moving and positioning the document objects suffer from the same lack of inventive concept.  According to TriDim, the "touch and drop" and "flicking" gestures were improvements specifically adapted for a 3-D space because known techniques for operating a 2-D workspace such as drag and drop techniques were not efficient.  The District Court found that the patents do not disclose any specific ways, hardware or software, that a user may program or implement these gestures, and that the claims were no more than circular definitions.  The elements that are defined only in terms of their functionalities, whether considered separately or as an ordered combination, fall short of constituting an inventive concept.

Thus, the District Court found the claims at issue in the '326 patent and the '709 patent to constitute a wholly generic computer implementation of the abstract idea of retrieving and arranging documents based on relative frequency of use.  The motion to dismiss was granted.

Despite the claims themselves specifically being directed to a "computer controlled display" and including tangible elements, such as "document receiving means," "positioning means," and "workspace display circuitry," the District Court found the claim to be directed to ineligible subject matter.  The problem with the claim, in my opinion, is not that it is directed to ineligible subject matter, but that it fails with respect to section 112 for lack of written description for providing any detail of the "means" elements, or any detail of such "circuitry".  The fact that section 101 is used to invalidate this patent by the District Court seems misplaced.

Order dismissing the complaint by District Judge James Donato.