Sending an image filter to users whose location matches a rule is an abstract idea

2023-04-12Fed. Cir.

Sanderling Management Ltd. v. Snap Inc., 65 F.4th 698 (Fed. Cir. Apr. 12, 2023) (precedential) (Stark, J., joined by Chen and Cunningham, JJ.), affirming No. 2:21-cv-02324-GW-JC (C.D. Cal. July 21, 2021) (Wu, J.)

United States Patent Nos. 9,355,412, 9,639,866 and 10,108,986, each titled "Dynamic Promotional Layout Management and Distribution Rules," claim a computerized method of distributing a digital image processing function: a server stores the function with a distribution rule defining a geographic location, receives Global Positioning System location indications from mobile devices, matches them with the geographic location, and automatically forwards the function to matching devices, where an application applies it to an image. The Central District of California dismissed with prejudice under Rule 12(b)(6) and denied leave to amend. The Federal Circuit affirmed in a precedential opinion by Judge Stark, joined by Judges Chen and Cunningham. At step one the claims are directed to "providing information – in this case, a processing function – based on meeting a condition," using computers as a tool rather than improving them. The court held that claim construction "is not an inviolable prerequisite" to a ruling under Section 101 of Title 35 of the United States Code, that a district court may require the party seeking construction to propose one, show it is not frivolous and explain how it changes the analysis, and that Sanderling did none of that. At step two the distribution rule applies the abstract idea on common components, asserted "scalability and speed" gains are inherent in computer implementation, and the examiner's reasons for allowance do not bind the court.

What it changesTwo rules for anyone claiming the delivery of a model, a feature or a filter. First, distributing something to a user because a condition is met is abstract however specific the thing distributed is; the eligible subject is how the image processing itself works, and a claim to location-gated delivery of an unspecified function has nothing to stand on. Second, resisting a pleading-stage eligibility motion by naming claim terms that need construction no longer works at the Federal Circuit: the patentee must put a construction on the table, show it is not frivolous and explain how it changes step one or step two, or the court decides without it. For portfolio review, any claim whose only concrete element is a trigger condition such as location, time or a user attribute should be treated as exposed on a Rule 12 motion, and any eligibility defense plan should include the actual proposed constructions and the factual disputes they create, identified before the ruling rather than in a motion for reconsideration.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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