The US decision DDR Holdings, LLC v. Hotels.com, L.P. [1] was the first
prominent decision finding a software invention patentable in the US after the
Alice decision [2], which has been used to invalidate many US software
patents.
If you need to know how to
draft a software patent for the US, or need to respond to a patentable subject
matter objection, DDR holdings provides good guidance on how to proceed.
The court considered if the internet
e-commerce related invention the subject of patent US 7,818,399 was patent eligible
subject matter.
The patent is directed to
systems and methods of generating a composite webpage that combines certain
visual elements of a host website with content of a third party merchant. For
example, the generated composite webpage may combine the logo, background
colour, and fonts of the merchant website with product information from the
merchant. The patent explains that prior art systems allow third-party
merchants to lure the host website visitor traffic away from the host website
because visitors would be taken to the third-party merchants website when they
clicked on the merchants advertisement on the host site. The provided solution
to this problem is creating a new webpage that permits a website visitor in a
sense to be in two places at the same time on activation of a hyperlink on the
host website – such as an advertisement for a third-party merchant – instead of
taking the visitor to the merchant's website. The system generates and directs
the visitor to a composite webpage that displays product information from the
third-party merchant, but retains the host websites look and feel. Thus, the
host website can display a third-party merchants products, but retain its visitor
traffic by displaying this product information from within a generated webpage
that gives the viewer of the page the impression that she is viewing pages
served by the host website.
The representative claim
considered by the court for patent eligible subject matter is:
A system useful in an outsource
provider serving web pages offering commercial opportunities, the system
comprising:
(a)
a computer store containing data, for each of a
plurality of first web pages, defining a plurality of visually perceptible
elements, which visually perceptible elements correspond to the plurality of
first web pages;
i. wherein each of
the first web pages belongs to one of a plurality of web page owners;
ii. wherein each of
the first web pages displays at least one active link associated with a
commerce object associated with a buying opportunity of a selected one of a
plurality of merchants; and
iii. wherein the
selected merchant, the outsource provider, and the owner of the first web page
displaying the associated link are each third parties with respect to one
other;
(b)
a computer server at the outsource provider, which
computer server is coupled to the computer store and programmed to:
i. receive from the
web browser of a computer user a signal indicating activation of one of the
links displayed by one of the first web pages;
ii. automatically identify
as the source page the one of the first web pages on which the link has been
activated;
iii. In response to
identification of the source page, automatically retrieve the stored data
corresponding to the source page; and
iv. Using the data
retrieve, automatically generate and transmit to the web browser a second web
page that displays: (A) information associated with the commerce object
associated with the link that has been activated, and (B) the plurality of
visually perceptible elements visually corresponding to the source page.
The court applied the two-step
Alice analysis. First, given the nature of the invention in this case, it is
considered whether the claim is directed to a patent ineligible abstract idea.
If so, then the second step is to consider 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
of the abstract idea.
The court noted that although
the claims addressed a business challenge related to website visitors, it is a challenge particular to the Internet.
The court contrasted the invention to other invalidated patents which had
claims that recited various computer hardware elements but were in substance
directed to nothing more than the performance of an abstract business practice
on the Internet or using a conventional computer.
Instead, the claimed solution
was found to be necessarily rooted in
computer technology in order to overcome a problem specifically arising in the
realm of computer networks. The
claims recite an invention that is not merely the routine or conventional use
of the Internet. Also, the claims do not attempt to pre-empt every
application of the idea of increasing sales by making two webpages look the
same. Rather, they recite a specific way to automate the creation of a
composite webpage by an outsourced provider.
It should be noted that the
law in the area may not be settled. One
of the three judges, considering the matter dissented, arguing that the invention
is simply an abstract idea, that is, online merchant sales can be increased if
two webpages have the same look and feel, and involves using a generic
computer. If you need to draft or argue
for a US software patent application, the applicable lessons from this decision
are:
· frame the
invention as being necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.
· draft claims that
recite an invention that is not merely the routine or conventional use of the
Internet.
· do not merely
recite the performance of some business practice from the pre- Internet world
on a general purpose computer.
[1] DDR Holdings LLC v.
Hotels.com, 773 F.3d 1245 (Fed. Cir.
2014)
[2] Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014).
