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Alice strikes again - Targeted advertising is patent-ineligible

October / November 2021 IP Newsletter

The U.S. Court of Appeals for the Federal Circuit has dispatched yet another patented invention to the wasteland of patent-ineligible abstract ideas under the Alice test. The court’s ruling reaffirmed that targeted advertising can’t be patented.

Ad tech triggers lawsuit

Free Stream Media Corporation (doing business as Samba) sued Alphonso Inc. for infringing a patent related to providing mobile phone users with targeted advertisements based on data gathered from their smart televisions. In addition to involving a mobile device and smart TV, the patent uses a “relevancy matching server.”

The patent also encompasses the ability to communicate between the mobile device and smart TV by bypassing the “security sandbox” on the mobile device without user intervention. Security sandboxes generally prevent apps from accessing the data of other apps.

Alphonso filed a motion to dismiss, asserting that targeted advertising is a patent-ineligible abstract idea. The trial court disagreed, finding that the patent didn’t cover the abstract idea of tailored advertising. Rather, it said, the patent was for “systems and methods for addressing barriers to certain types of information exchanged between various technological devices,” such as a tablet and smart TV being used at the same time in the same place. Alphonso appealed.

Patent misses the mark

The U.S. Supreme Court has established the Alice test, a two-step test for identifying patents that cover patent-ineligible concepts. Under the Alice test, the court first determines whether the claimed invention is directed to a law of nature, a natural phenomenon or an abstract idea that isn’t integrated into a practical application. If so, it then determines whether the invention includes an “inventive concept” that transforms it into a patent-eligible application of the concept.

On appeal, the Federal Circuit found the patent was ineligible under the test’s first step. Among other problems, the patent didn’t describe any specific manner by which a mobile device’s security sandbox is bypassed; it merely described the result of bypassing the sandbox.

The court found nothing that constituted an actual improvement to a technology or a computer’s functionality — as opposed to an improvement to targeted advertising. The ability to pierce a mobile device’s sandbox, it said, simply used a computer to achieve the abstract idea of providing targeted advertising.

The trial court didn’t address the test’s second step. On appeal, though, Samba argued that the patent permitted “the new and unconventional operation of mobile devices and televisions” by facilitating communication despite the mobile device’s security sandbox.

But the court found nothing inventive in the patent that wasn’t previously possible. The patent, it said, just described the use of generic features and routine functions to implement the underlying abstract idea.

The “work-around” features for bypassing the security sandbox also weren’t inventive, according to the court. They weren’t the kind of additional features that provide practical assurance that the patent is anything more than an attempt to monopolize the abstract idea itself.

The Federal Circuit concluded that Samba failed to demonstrate the patent covered a patent-eligible invention. It therefore reversed the trial court’s denial of Alphonso’s motion to dismiss.

Don’t phone it in

Abstract ideas continue to face an uphill battle when it comes to patent eligibility. A carefully crafted application is essential if a patent is to survive a challenge.