Patent Covering the Use of Hierarchical Categories to Access Content Claims Ineligible Subject Matter: ITC | Practical Law

Patent Covering the Use of Hierarchical Categories to Access Content Claims Ineligible Subject Matter: ITC | Practical Law

In In the Matter of Certain Portable Electronic Devices and Components Thereof, following an early evidentiary hearing, an Administrative Law Judge (ALJ) at the US International Trade Commission (ITC) held that an asserted patent describing the use of hierarchical categories to access content on a portable music player claims ineligible subject matter under 35 U.S.C. § 101.

Patent Covering the Use of Hierarchical Categories to Access Content Claims Ineligible Subject Matter: ITC

by Practical Law Intellectual Property & Technology
Published on 24 Aug 2016 • USA (National/Federal)
In In the Matter of Certain Portable Electronic Devices and Components Thereof, following an early evidentiary hearing, an Administrative Law Judge (ALJ) at the US International Trade Commission (ITC) held that an asserted patent describing the use of hierarchical categories to access content on a portable music player claims ineligible subject matter under 35 U.S.C. § 101.
On August 19, 2016, in In the Matter of Certain Portable Electronic Devices and Components Thereof, an Administrative Law Judge (ALJ) at the US International Trade Commision (ITC) held that an asserted patent covers ineligible subject matter under 35 U.S.C. § 101 (Inv. No. 337-TA-994 (Aug. 19, 2016)). The ALJ's decision is notable because it came after an early evidentiary hearing on this issue that the ITC ordered when it instituted the investigation.
On March 24, 2016, Creative Technology Ltd. and Creative Labs, Inc., filed a complaint with the ITC under 19 U.S.C. § 1337. The complaint asserted infringement of US Patent No. 6,928,433 (the '433 patent), which describes a user interface for a small portable music player that uses hierarchical categories to access content.
On May 11, 2016, the ITC instituted an investigation based on Creative's complaint. In the notice instituting the investigation, the ITC ordered the ALJ to hold an early evidentiary hearing to determine whether the asserted claims of the '433 patent recite patent-eligible subject matter under 35 U.S.C. § 101. After the early evidentiary hearing, the ALJ held that the asserted claims of the '433 patent are not directed to patentable subject matter under Section 101. The ALJ used the two step framework from the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l (134 S. Ct. 2347 (2014)). The ALJ explained that:
  • Under the first step of the Alice framework, the claims are directed to the abstract idea of using hierarchical categories to access content. The ALJ noted that the media player, software, and related electronic components are all generic and fail to disclose any innovative improvement in the structure or implementation of the claimed hierarchy. The ALJ also observed that the claims are broad.
  • Under the second step of the Alice framework, the remaining features of the asserted claims do not provide an inventive concept. The ALJ noted that playing a song on an electronic media device using the abstract hierarchy is not an inventive concept, and neither is using well-known musical categories (such as artist, album, and genre) to organize and play songs.
The outcome in this investigation may signal the ITC's increased willingness to order early evidentiary hearings on case-dispositive issues, such as patent eligibility under Section 101.
For more information on the ITC's pilot program for early disposition of Section 337 investigations, see Practice Note, ITC Section 337 Patent Investigations: Overview: Pilot Program for Early Disposition and Legal Update, ITC Launches Pilot Program for Early Disposition of Section 337 Investigations.