Menu
On September 3, 2024, the Federal Circuit issued a precedential decision affirming a district court decision where claims relating to “video-on-demand” systems did not constitute patentable subject matter because the claims recite abstract ideas.1
Broadband iTV, Inc. holds five patents at issue in this case. The ’026 patent family consists of four patents2, generally relating to an “interactive television service” that “sought to improve existing program guides by automating the creation of a hierarchically arranged, template-based program guide.”3 The fifth patent—U.S. Patent No. 9,973,825 (’825 patent)—relates to adjusting the order of categories listed in an individual user’s guide based on such user’s viewing history.
In 2020, Broadband iTV, Inc. sued Amazon in the District Court for the Western District of Texas, claiming that Amazon infringed the ‘026 patent family and the ’825 patent.4 Amazon filed a motion to dismiss, alleging that the patents were invalid under Section 101 of the Patent Act.5
The District Court found that the asserted claims on the ’026 patent family “are directed to the abstract idea of receiving hierarchical information and organizing the display of video content.”6 The District Court relied on the landmark case, Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014), in which the Supreme Court established a two-step test to evaluate whether a patent claims a subject matter that is patent-ineligible.7 The first step in the Alice test is for a court to determine whether a claim relates to a patent-ineligible concept, such as an abstract idea.8 If the claim is found to relate to a patent-ineligible claim, then, as a second step, the Court must determine whether the claim has elements sufficient to render it a patent-eligible application of an abstract idea.9
In a de novo review, the United States Court of Appeals for the Federal Circuit upheld the District Court’s determination that all of the asserted patents failed to claim a patentable subject matter.
Applying the first step of the Alice test to the ’026 patent family, the Federal Circuit found that the District Court, “correctly determined that receiving metadata and organizing the display of video content based on that metadata is abstract.”10 Reaching this determination, the Federal Circuit likened the claimed subject matter to receiving and displaying information, and organizing it based on classifications.11 By contrast, BBiTV maintained that the subject matter was more like the improved user interfaces of the Core Wireless and Data Engine cases, but the Federal Circuit dismissed that argument, observing that including a user interface does not “automatically” provide patentable subject matter.
Applying the second step of the Alice test to the ’026 patent family, the Federal Circuit found that the District Court correctly “determined nothing transforms the claims into something other than the abstract idea because there is no genuine dispute of material fact that the claims ‘recite only generic and conventional components, arranged in a conventional manner, and provide only conventional functionalities.’”12 BBiTV argued that: (i) generating displays from template based on data from content providers, (ii) a content management system on a server, and (iii) its claimed templates transform its claim to non-abstractness. However, the Federal Circuit disagreed with Broadband, and upheld the District Court’s finding that “the ’026 patent family claims do not include something ‘significantly more’ than the abstract idea itself.”13
The Federal Circuit then examined the ’825 patent under the same test. Applying the first step of Alice to this patent, the Federal Circuit held that the representative claim “of the ’825 patent is directed to the abstract idea of collecting and using viewing history data to recommend categories of video content.” Put differently, the claim was found to be the kind of targeting that the Federal Circuit has “repeatedly found to be abstract” and that “the ’825 patent claims do not claim a technological solution to a technological problem.” 14
Moving to Alice Step 2, the Federal Circuit once again agreed with the District Court’s determination that “nothing transforms the [’825 patent] claims into something other than the abstract idea itself.” Generating and arranging displays based on relevance was not found to be a sufficient enough a claim to transform this abstract concept into a patentable claim.15 The Federal Circuit reasoned that this claim is merely a “feature of the abstract idea of recommending categories,” and that “the idea of creating categories is a longstanding human practice that does not transform the claims,” considering that the claim “does not describe how the desired result is achieved.”16
Discerning the line between patentable and unpatentable subject matter remains one of the knottiest topics in patent law. While the Alice two-step test has been enshrined under the current statutory regime, its application remains case-specific and sometimes idiosyncratic—even now with a decades-worth of experience applying it. With the line so difficult to discern, many have tried (and many have failed) to address the problem through legislation. The Patent Eligibility Restoration Act (PERA) is a contemporary attempt at untying the knots that deserves attention.