Federal Circuit Panel Splits in Evaluating Patent Eligibility of IBM’s Map Display and Layered Data Patents

By Michael Dorfman | November 1, 2022

In an October 17, 2022 precedential opinion in IBM v. Zillow Group (available here), the Federal Circuit affirmed the grant of a motion for judgment on the pleadings concluding that two of the asserted patents claimed ineligible subject matter under 35 U.S.C. § 101.  Judge Stoll dissented-in-part with regard to two dependent claims for which she would have reversed, as the complaint and an expert declaration attached thereto plausibly argued that those claims were directed to a technical improvement, not an abstract idea.

 

In its infringement lawsuit against Zillow, IBM asserted U.S. Patent No. 9,158,789 (“the ’789 Patent”) that claimed a method in which a user draws a shape on a map to select that area of the map, and the claimed system then filters and displays data limited to that area of the map, and it synchronizes which elements are shown as “selected” on the map and its associated list.  IBM also asserted U.S. Patent No. 7,187,389 (“the ’389 Patent”) that claimed a method of displaying objects in visually distinct layers. Objects in layers of interest can be brought to and emphasized at the top of the display while other layers are deemphasized.  Zillow moved for judgment on the pleadings that the ’789 and ’389 Patents were invalid under § 101.

 

With regard to the ’789 Patent, in considering step one of the Alice two-step framework for evaluating patent eligibility, the Federal Circuit agreed with the district court that the patent is “directed to the abstract idea of responding to a user’s selection of a portion of a displayed map by simultaneously updating the map and a co-displayed list of items on the map.”  Turning to Alice step two, the Federal Circuit found that the cited “synchronizing” and “user determined shape” claim limitations “use functional language, at a high level of generality and divorced from any computer technology, to recite the claimed functions. The limitations simply describe the abstract method without providing more.”

 

Accordingly, the district court’s decision holding the ’789 patent claims invalid under § 101 was affirmed.

 

With regard to the ’389 Patent, the majority stated that the ’389 patent “is directed to the abstract idea of organizing and displaying visual information.”  Turning to Alice step two, the district court had found “that the patent contained no inventive concept because it was not directed to a computer-specific problem and merely used well-understood, routine, or conventional technology (a general-purpose computer) to more quickly solve the problem of layering and displaying visual data.”  The majority agreed and saw no inventive concept that transforms the abstract idea of organizing and displaying visual information into a patent-eligible application of that abstract idea.

 

Accordingly, the district court’s decision holding the ’389 patent claims invalid under § 101 was also affirmed.

 

Judge Stoll, in dissenting in part, indicated that she would reverse the judgment of patent ineligibility for claims 9 and 13 of the ’389 patent. Both claims are directed to the same subject matter and recite the same alleged technical improvement: a layered data display tool that allows a user to re-layer and re-match the objects in a given layer to emphasize or de-emphasize different objects displayed to the user.

 

She stated that both the complaint and the expert declaration addressed problems with the prior art and how the claimed invention solved those problems.  For example, the expert provided details related to how the claimed re-layering and rematching “allows users to dynamically manipulate the visualization” of data on the computer display “to better support their ability to scrutinize and review the data.”

 

Thus, in Judge Stoll’s opinion, “[t]aking the above factual allegations in the complaint and attached expert declaration as true, together with all reasonable inferences, establishes that the claimed re-layering and re-matching system recited in claims 9 and 13 is directed to a technical improvement in how a user interacts with a computer via the graphical user interface, not an abstract idea. And we have held inventions directed to improvements to a graphical user interface patent eligible.”

 

Following IBM v. Zillow Group, a patent owner should consider § 101 issues at the time of filing a complaint, including the level of detail to include in the complaint regarding the prior art and how the claims are directed to a technical improvement, and whether to anticipatorily support a § 101 challenge with evidence from an expert.  While such efforts may not be successful in fending off a challenge (even on appeal), this case shows that the Federal Circuit is mindful of the presence or absence of such information.