Signal Processing Claims for Decrypting Encrypted Information Found Patent Ineligible
Last week, the U.S. District Court for the Eastern District of Texas, Marshall Division ruled that Defendant Apple, Inc. (hereinafter "Apple") failed to show that claims related to signal processing are patent ineligible under 35 U.S.C. § 101.
Plaintiff Personalized Media Communications, LLC (hereinafter "PMC") asserted that Apple infringed PMC's U.S. Patent. No. 8,191,091 (the '091 patent). Apple had moved to dismiss all claims of the '091 patent as directed to ineligible subject matter. The Court denied this motion to dismiss, finding that the '091 patent claims to be patent-eligible. Apple then moved for summary judgement that all the claims of the '091 patent are invalid under § 101. (Apple's motion also moved for relief under § 101 with respect to PMC's U.S. Patent Nos. 8,559,635 and 7,752,649, but only the '091 patent was addressed by the Court in the present decision due to it being the only patent set for trial at the time.)
The '091 patent includes four independent claims, including claim 13, which Apple asserted as being representative of all of the claims of the '091 patent. The Court's decision thus addressed only claim 13.
Claim 13 is as follows:
13. A method of decrypting programming at a receiver station, said method comprising the steps of:
receiving an encrypted digital information transmission including encrypted information;
detecting in said encrypted digital information transmission the presence of an instruct-to-enable signal;
passing said instruct-to-enable signal to a processor;
determining a fashion in which said receiver station locates a first decryption key by processing said instruct-to-enable signal;
locating said first decryption key based on said step of determining;
decrypting said encrypted information using said first decryption key; and
outputting said programming based on said step of decrypting.
The '091 patent generally aims to provide an integrated multimedia system in which a "receiver station" can, among other things, combine various types of programming (e.g., television, radio, computer communications), generate user-specific information related to such programming, identify and block those who pirate programming, and -- in the case of the invention of claim 13 -- identify, and then decrypt, programming and instruction signals that are encrypted.
The Court began its analysis by determining whether claim 13 as a whole is directed to an abstract idea. In its motion for summary judgement and in the previous motion to dismiss, Apple argued that the '091 patent is directed to the abstract idea of "using an instruct-to-enable signal to decrypt (convert from unintelligible to intelligible) information," and asserted that claim 13 claim "focuses on the abstract idea of decrypting encrypted information, rather than the physical system or the specific software that processes and decrypts the information." Apple argued that this alleged abstract idea is akin to the "manipulation of data" and other abstract ideas that the Federal Circuit found to be patent ineligible in the likes of Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), and Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Additionally, Apple argued that all but the decrypting and outputting steps were known in the art before the priority date of the '091 patent.
Apple also noted that the Federal Circuit previously affirmed invalidity of other PMC patents that are "closely related" to the '091 patent under § 101. Lastly, Apple cited to a deposition of a named inventor in an attempt to demonstrate that the concepts of encryption and decryption were well-known before the '091 patent and fail to render the claims eligible.
In response to Apple's motion to dismiss, the Court had concluded that that the claims of the '091 patent are directed to methods of using an instruct-to-enable signal included in digital information to determine a fashion in which a station locates a decryption key that can decrypt encrypted information. The Court had also concluded that claim 13 "describes an improvement to the delivery of 'instruct-to-enable signals' and a technical way to decrypt transmitted information. In support of this improvement, the Court cited to the specification of the '091 patent:
[T]he '091 patent says that transmitting the "instruct-to-enable signal" in the "information transmission" improves the reliability of the signal's delivery. The patent states the improved delivery process increases the number of functions the "instruct-to-enable signal" can control because the signal can "occur at precise times in programming and can synchronize the operation of receiver station apparatus to the timing of programming transmission." Second, the claim requires a "receiver station" that is able to "locate a first decryption key" by processing the "instruct-to-enable signal." The specification shows that decrypting "digital programming" "based on" the "control signal" can be a technical solution for causing a receiving device to decrypt a transmission. [Citations omitted.]
Here, PMC indicated that it agreed with the Court's previous analysis, and the Court indicated that Apple provided no contrary evidence.
The Court nevertheless proceeded with its § 101 analysis, referring yet again to its previous finding that, even if the claims were directed to an abstract idea, additional elements in the claims would transform them into patent-eligible applications of that idea:
Claim 13 of the '091 Patent is a patent-eligible application at least because of its arrangement of steps. "[A]n inventive concept can be found in the nonconventional and non-generic arrangement of known, conventional pieces." Bascom Glob. Internet Servs. v. AT&T Mobility LLC, Case No. 2015-1763, 2016 WL 3514158, at *6 (Fed. Cir. Jun. 27, 2016). Although some of the pieces in the '091 Patent are perhaps known and conventional—such as encryption and decryption—the '091 Patent arranges them in a way that is sufficient to confer an inventive concept, including "determining a fashion in which [a] receiver station locates a first decryption key by processing [an] instruct-to-enable signal" and "locating said first decryption key based on said step of determining." [Citations omitted.]
The Court thus found that the '091 patent is directed to patent eligible subject matter.
Personalized Media Communications, LLC v. Apple, Inc. (E.D. Tex. 2021)
Report & Recommendation by Magistrate Judge Payne