Response at 20. It cites the Federal Circuit's decision in SiRF Technolog y , Inc. v. International Trade Commission , 601 F.3d 1319, 1332–33 (Fed.Cir.2010) (" SiRF Technolog y "), which held that "the presence of the GPS receiver in the claims places a meaningful limit on the scope of the claims." Response at 20 (quoting SiRF Technolog y , 601 F.3d at 1332 ).
Although Intellect cites no authority in support of this argument, recent cases have distinguished BMC Resources and Muniauction in addressing claims that, while "contemplat[ing]" the conduct of several parties, explicitly address the conduct only of a single actor. Level 3 Comms., LLC v. Limelight Networks, 630 F. Supp. 2d 654, 661 (E.D. Va. 2008); SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1330 (Fed. Cir. 2010). Whether a claim requires "different parties to perform different acts within one claim," BMC Res., 498 F.3d at 1381, or instead is "drawn to actions which can be
Appellant's Br. 22. According to IBM, this situation is similar to that in SiRF Technology, Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010), which it argues held that when an accused infringer dictates the performance of a claimed method step, that is sufficient to hold the accused infringer responsible for performing that step. Booking Holdings responds that it is undisputed that it does not perform the storing step and that the users' third-party web browsers and mobile operating systems perform the local storing of advertising data at the users' systems.
Against this backdrop of Supreme Court jurisprudence, the Federal Circuit has considered numerous § 101 challenges, many of which are instructive to the instant case. For example, in SiRF Tech., Inc. v. Int'l Trade Comm'n, the court considered a patent directed to "calculating an absolute position of a GPS receiver." 601 F.3d 1319, 1332 (Fed. Cir. 2010). The court found that this invention satisfied the machine-or-transformation test because "a GPS receiver is a machine and is integral to each of the claims at issue.
"In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly." SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). For example, in SiRF Tech., the Federal Circuit determined that the claimed GPS receiver, which translated a plurality of satellite signals into a second format supported by the remote receiver, provided a meaningful restriction on the scope of the claim because the task could not be performed without the machine.
In re Bilski, 545 F.3d 943, 954 (Fed.Cir.2008) (en banc), aff'd on other grounds, Bilski II, 561 U.S. 593, 130 S.Ct. 3218, 177 L.Ed.2d 792. The court finds the comparison of Bancorp Servs., LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266 (Fed.Cir.2012), to SiRF Tech., Inc. v. int'l Trade Comm'n, 601 F.3d 1319 (Fed.Cir.2010), instructive. In Bancorp, where the asserted patents disclosed “specific formulae for determining the values required to manage a stable value protected life insurance policy,” the district court granted summary judgment of invalidity under § 101. Bancorp, 687 F.3d at 1270.
The district court clarified that the jury was authorized to find direct infringement of a method claim by D–Link if its products automatically perform the disputed steps without user modification. JMOL Order, 2013 WL 4046225, at *9 (citing SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1331 (Fed.Cir.2010) ). The district court reasoned that, because the accused products performed the claimed method when operated by D–Link's customers without any modification, a finding of direct infringement was justified.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed.Cir.2012). To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not. See SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed.Cir.2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.”). Thus, as we held in Fort Properties, Inc. v. American Master Lease LLC, the limitation “using a computer” in an otherwise abstract concept did not “ ‘play a significant part in permitting the claimed method to be performed,’ ” 671 F.3d 1317, 1323 (Fed.Cir.2012) (quoting Dealertrack, 674 F.3d at 1333), and thus did not “impose meaningful limits on the claim's scope,” id. (quoting CyberSource, 654 F.3d at 1375).
Appellee Br. 7–8. With respect to Alice's method claims, CLS Bank contends that: (1) they fail the machine or transformation test because, “even assuming a broad claim construction ... requiring computer implementation, such implementation does not impose a ‘meaningful limitation’ on the scope of the claims, because the computer does not play a ‘significant part in permitting the claimed method to be performed,’ but rather ‘function[s] solely as an obvious mechanism for permitting a solution to be achieved more quickly,’ ” id. 11, 37–38 (citing SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed.Cir.2010)); (2) like “the claims in Bilski,[ Gottschalk v.] Benson [409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972) ], and [Parker v.] Flook [437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978) ], Alice's method claims would effectively preempt the use of the abstract business concept for exchanging an obligation which is recited in all of the claims,” id. 30; and (3) “[l]ike the claims at issue in Benson and Flook, Alice's method claims ... [are] effectively drawn to a formula or algorithm ... with data collection preceding use of the algorithm, and account adjustments and instructions that are ‘post-solution activity,’ ” id. 38. With respect to Alice's computer-implemented system and product claims, CLS Bank contends that they are also directed to abstract ideas because, under Benson, a mere “redrafting of method claims” to recite a “computer” and “data storage unit” that are “ ‘configured’ to carry out the abstract method” does not save the claims from abstractness.
“Whether a patent claim is drawn to patent-eligible subject matter is an issue of law that is reviewed de novo.” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1331 (Fed.Cir.2010). In Research Corp., we recently admonished that for abstractness to invalidate a claim it must “exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.”