Affinity Labs of Texas, LLC v. DIRECTV, LLC et al

Filing 67

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT NOTICE OF ENTRY OFJUDGMENT ACCOMPANIED BY OPINION. (jch)

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UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
NOTICE OF ENTRY OF
JUDGMENT ACCOMPANIED BY OPINION
OPINION FILED AND JUDGMENT ENTERED: 09/23/2016
The attached opinion announcing the judgment of the court in your case was filed and judgment was entered on
the date indicated above. The mandate will be issued in due course.
Information is also provided about petitions for rehearing and suggestions for rehearing en banc. The questions
and answers are those frequently asked and answered by the Clerk's Office.
Costs are taxed against the appellant in favor of the appellee under Rule 39. The party entitled to costs is
provided a bill of costs form and an instruction sheet with this notice.
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FOR THE COURT
/s/ Peter R. Marksteiner
Peter R. Marksteiner
Clerk of Court

cc: Patrick M. Arenz
Christopher C. Campbell
Nathan K. Cummings
Christopher Granaghan
Jeffrey Ta-Hwa Han
Brenda L. Joly
Benjamen Linden
Cyrus Alcorn Morton
John B. Palmer III
Hilary L. Preston
Ronald James Schutz
Darin W. Snyder
David B. Weaver

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15-1845 - Affinity Labs of Texas, LLC v. DIRECTV, LLC
United States District Court for the Western District of Texas, Case No. 6:15-cv-00030-WSS, 6:15-cv-00031WSS, 6:15-cv-00032-WSS, 6:15-cv-00033-WSS

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United States Court of Appeals
for the Federal Circuit
______________________

AFFINITY LABS OF TEXAS, LLC,
Plaintiff-Appellant
v.
DIRECTV, LLC, DIRECTV DIGITAL LLC, MLB
ADVANCED MEDIA, INC., MLB ADVANCED
MEDIA, L.P., NBA MEDIA VENTURES, LLC,
TURNER DIGITAL BASKETBALL SERVICES, INC.,
NHL INTERACTIVE CYBER ENTERPRISES, LLC,
NHL ENTERPRISES, INC., NHL ENTERPRISES,
L.P.,
Defendants-Appellees
______________________
2015-1845, 2015-1846, 2015-1847, 2015-1848
______________________
Appeals from the United States District Court for the
Western District of Texas in Nos. 6:15-cv-00030-WSS,
6:15-cv-00031-WSS, 6:15-cv-00032-WSS, 6:15-cv-00033WSS, Judge Walter S. Smith, Jr.
______________________
Decided: September 23, 2016
______________________
CYRUS ALCORN MORTON, Robins Kaplan LLP, Minneapolis, MN, argued for plaintiff-appellant. Also represented by RONALD JAMES SCHUTZ, PATRICK M. ARENZ,
BRENDA L. JOLY, BENJAMEN LINDEN.

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DAVID B. WEAVER, Baker Botts, LLP, Austin, TX, argued for all defendants-appellees. Defendants-appellees
NBA Media Ventures, Turner Digital Basketball Services,
Inc., NHL Interactive Cyber Enterprises, LLC, NHL
Enterprises, Inc., NHL Enterprises, L.P. also represented
by CHRISTOPHER GRANAGHAN; JEFFREY TA-HWA HAN,
Vinson & Elkins LLP, Austin, TX; HILARY L. PRESTON,
New York, NY.
DARIN W. SNYDER, O’Melveny & Myers LLP, San
Francisco, CA, for defendants-appellees DIRECTV, LLC,
DIRECTV Digital LLC.
NATHAN K. CUMMINGS, Cooley LLP, Reston, VA, for
defendants-appellees MLB Advanced Media, Inc., MLB
Advanced Media, L.P.
______________________
Before PROST, Chief Judge, BRYSON and WALLACH, Circuit
Judges.
BRYSON, Circuit Judge.
I
Affinity Labs of Texas, LLC, is the owner of U.S. Patent No. 7,970,379 (“the ’379 patent”). The patent contains two independent claims, one a system claim and the
other a method claim. The claims are directed to streaming regional broadcast signals to cellular telephones
located outside the region served by the regional broadcaster. Representative claim 1 of the ’379 patent, the
independent system claim, recites as follows:
1. A broadcast system, comprising:
a network based resource maintaining information associated with a network available representation of a regional broadcasting channel that
can be selected by a user of a wireless cellular telephone device; and

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a non-transitory storage medium including an application configured for execution by the wireless
cellular telephone device that when executed, enables the wireless cellular telephone device:
to present a graphical user interface comprising at least a partial listing of available media
sources on a display associated with the wireless
cellular telephone device, wherein the listing includes a selectable item that enables user selection of the regional broadcasting channel;
to transmit a request for the regional broadcasting channel from the wireless cellular telephone device; and
to receive a streaming media signal in the
wireless cellular telephone device corresponding
to the regional broadcasting channel, wherein the
wireless cellular telephone device is outside of a
broadcast region of the regional broadcasting
channel, wherein the wireless cellular telephone
device is configured to receive the application via
an over the air download.
Stripped of excess verbiage, claim 1 is directed to a
broadcast system in which a cellular telephone located
outside the range of a regional broadcaster (1) requests
and receives network-based content from the broadcaster
via a streaming signal, (2) is configured to wirelessly
download an application for performing those functions,
and (3) contains a display that allows the user to select
particular content. 1
Affinity has not separately argued the patentability of any of the other claims of the ’379 patent. Although
Affinity asserts that the district court erred by conducting
a “conclusory analysis of the ’379 patent[’s] dependent
claims,” the parties agreed at the hearing before the
1

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Affinity sued the nine defendants, alleging that they
infringed the ’379 patent by marketing a system that
allows customers to receive regional radio broadcasts on
their cellphones even when their cellphones are outside
the regions reached by the stations’ broadcast signals.
The defendants moved to dismiss the complaints for
failure to state a claim, arguing that the asserted claims
were not directed to patentable subject matter.
The magistrate judge recommended that the motion
to dismiss be granted. Following the two-stage inquiry for
patentability set forth by the Supreme Court in Mayo
Collaborative Services v. Prometheus Laboratories, Inc.,
132 S. Ct. 1289 (2012), and Alice Corp. v. CLS Bank
International, 134 S. Ct. 2347 (2014), the magistrate
judge found that the ’379 patent was directed to an “abstract idea” and that the claims did not contain an “inventive concept.”
The purpose of the ’379 patent, the magistrate judge
explained, “is the dissemination of regionally broadcasted
content to users outside the region.” That purpose, he
held, is a “fundamental economic and conventional business practice” that is both “well-known and historically
long-standing”; he therefore concluded that the claims
were directed to an abstract idea.
The magistrate judge next found that the claims of
the ’379 patent do not contain an inventive concept such
that they do more than claim the ineligible idea itself. He
magistrate judge that claim 1 of the ’379 patent was
representative. In light of that concession and Affinity’s
failure to present “any meaningful argument for the
distinctive significance of any claim limitations other than
those included” in claim 1, Electric Power Group, LLC v.
Alstom S.A., No. 2015-1778 (Fed. Cir. Aug. 1, 2016), slip
op. at 4, we treat claim 1 as representative of all the
claims of the ’379 patent for purposes of this appeal.

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explained that the patent “merely takes the abstract
idea . . . and applies it to a generic, electronic device, in
this case—a wireless cellular telephone.” He then concluded that the components of claim 1 are merely “routine
and generic processing and storing capabilities of computers generally,” and that the claimed functions—storing
information in memory, executing a program, and sending
and receiving data—can all be performed by a generic
computer: “There is not a non-generic function or component contained in the claims that sets forth the blueprint
with any degree of specificity of how to disseminate
regional broadcast content to a user outside the region
over a wireless, cellular telephone device.”
In response to Affinity’s assertion that the downloadable application is an inventive concept, the magistrate judge observed that the patent “merely states that
the application ‘enables’ the device to present a graphical
user interface so a user can select what data that user
wants to stream”; the patent is “devoid of any teaching or
blueprint explaining how the device can do what it purports to do.” The “bottom line,” he explained, “is that
Claim 1 takes the abstract idea and says ‘apply it’ to a
wireless, cellular telephone device acting as a generic
computer.”
The magistrate judge also rejected Affinity’s argument based on the graphical user interface limitation in
claim 1. He ruled that the graphical user interface limitation merely recites a generic computer component and
does not contribute an inventive concept to the claim.
The district court accepted the magistrate judge’s
recommendation and entered judgment against Affinity.
The court agreed with the magistrate judge that the ’379
patent is directed to an abstract idea. In particular, the
court agreed that the purpose of the claimed invention—
to disseminate regionally broadcast content to users
outside the region—is a well-known, longstanding busi-

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ness practice, and that the claims directed to that purpose
are not tangible and concrete. The court also agreed that
the claimed “downloadable application with graphical
user interface” does not qualify as an “inventive concept.”
II
The framework for determining whether a particular
patent claim is directed to patentable subject matter is by
now familiar. Section 101 of the Patent Act provides that
“[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. The Supreme Court
has held that the broad language of that provision is
subject to an implicit exception for “laws of nature, natural phenomena, and abstract ideas,” which are not patentable. Alice, 134 S. Ct. at 2354.
The Supreme Court has devised a two-stage framework to determine whether a claim falls outside the scope
of section 101. The prescribed approach requires a court
to determine (1) whether the claim is directed to a patentineligible concept, i.e., a law of nature, a natural phenomenon, or an abstract idea, and if so, (2) whether the elements of the claim, considered “both individually and ‘as
an ordered combination,’” add enough to “‘transform the
nature of the claim’ into a patent-eligible application.”
Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at
1297-98). In the context of claims that are challenged as
containing only abstract ideas, those two stages are
typically referred to as the “abstract idea” step and the
“inventive concept” step.
The “abstract idea” step of the inquiry calls upon us to
look at the “focus of the claimed advance over the prior
art” to determine if the claim’s “character as a whole” is
directed to excluded subject matter. The “inventive
concept” step requires us to look with more specificity at

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what the claim elements add, in order to determine
“whether they identify an ‘inventive concept’ in the application of the ineligible subject matter” to which the claim
is directed. Elec. Power Grp., LLC v. Alstom S.A., No.
2015-1778 (Fed. Cir. Aug. 1, 2016), slip op. at 6; see also
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016); Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
1369, 1375-76 (Fed. Cir. 2016); Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
We have acknowledged that “precision has been elusive in defining an all-purpose boundary between the
abstract and the concrete.” Internet Patents, 790 F.3d at
1345. The inquiry is not an unbounded one, however.
This court has applied the two-stage Mayo/Alice inquiry
in numerous cases during the four years since the Supreme Court’s decision in Mayo, and those decisions have
provided substantial guidance in determining whether
claims are unpatentable under the “abstract idea” rubric.
Viewing this case in light of the principles set forth by the
Supreme Court and applied by this court, we are persuaded that the claims at issue in this case fall on the
unpatentable side of the line.
A
The concept of providing out-of-region access to regional broadcast content is an abstract idea, as that term
is used in the section 101 context. It is a broad and
familiar concept concerning information distribution that
is untethered to any specific or concrete way of implementing it.
The practice of conveying regional content to out-ofregion recipients has been employed by nearly every form
of media that has a local distribution. It is not tied to any
particular technology and can be implemented in myriad
ways ranging from the low-tech, such as by mailing copies
of a local newspaper to an out-of-state subscriber, to the
high-tech, such as by using satellites to disseminate

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broadcasts of sporting events. As the magistrate judge
noted, such out-of-region broadcasts have been commonplace since the late 20th century, in the form of systems
delivering local radio and television broadcasts of sporting
events to a national audience.
The ’379 patent claims the function of wirelessly
communicating regional broadcast content to an out-ofregion recipient, not a particular way of performing that
function. While independent claim 1 refers to general
components such as a cellular telephone, a graphical user
interface, and a downloadable application, the claimed
invention is entirely functional in nature. It recites
software in the form of “an application configured for
execution by the wireless cellular telephone device” that
performs three functions: (1) it presents a listing of available media choices on a display on the cellular telephone;
(2) it enables the telephone “to transmit a request for the
regional broadcasting channel”; and (3) it enables the
telephone “to receive a streaming media signal in the . . .
device corresponding to the regional broadcasting channel” when the device is outside of the range of the regional
broadcaster. There is nothing in claim 1 that is directed
to how to implement out-of-region broadcasting on a
cellular telephone. Rather, the claim is drawn to the idea
itself.
To be sure, the ’379 patent claims the wireless delivery of regional broadcast content only to cellphones. In
that sense, the claims are not as broad as the abstract
idea underlying them, which could apply to the delivery of
out-of-region content to any electronic device. That restriction, however, does not alter the result. All that
limitation does is to confine the abstract idea to a particular technological environment—in this case, cellular
telephones. The Supreme Court and this court have
repeatedly made clear that merely limiting the field of use
of the abstract idea to a particular existing technological
environment does not render the claims any less abstract.

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See Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294;
Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l
Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Even if all the details contained in the specification
were imported into the ’379 claims, the result would still
not be a concrete implementation of the abstract idea. In
fact, the specification underscores the breadth and abstract nature of the idea embodied in the claims.
The specification describes the wireless communication of information to an electronic device at a high level
of generality. In a passage describing figure 1 of the ’379
patent, reproduced below, the specification states that the
“general system for wirelessly communicating selective
[sic] information to an electronic device” includes “a
digital engine 101 coupled to a communications engine
102,” which is “remotely coupled to an electronic device
103,” and which “may be directly or indirectly coupled to
storage device 105 operable to store information.” ’379
patent, col. 3, ll. 24-31. The communications engine “is
communicatively coupled to digital engine 101 and operable to wirelessly communicate the selected information to
electronic device 103.” Id., col. 3, ll. 37-39.

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The specification adds that “[c]ommunications engine
102 may be operable to wirelessly communicate selected
information to electronic device 103 in a plurality of ways.
The present invention advantageously allows for several
different embodiments of wirelessly communicating
selected audio information to electronic device 103 and is
not limited to any specific configuration.” Id., col. 4, ll. 3338. “Therefore, system 100 may be configured in a plurality of ways to communicate selected information to electronic device 103.” Id., col. 6, ll. 8-10.
In the very brief discussion that is pertinent to out-ofregion broadcasting claims, the specification states that “a
user may want to listen to a radio station located in a
remote location wherein conventional radio receivers
could not receive the desired broadcast. For example, a
person living in Houston, Tex. may not be able to receive
a radio broadcast signal from a radio station in Seattle,
Wash. utilizing a conventional radio receiver.” ’379
patent, col. 15, ll. 59-64. 2
That passage describes the objective of making broadcast media available outside of its usual local distribution
area. The passage is found in a portion of the specification that describes a flow chart with a series of steps
relating to the provision of audio content over the Internet
to an electronic device. ’379 patent, col. 14, line 34,
through col. 17, line 17. The first two steps in the flow
chart read “User accesses web page via Internet” and
“User selects audio information.” The next pertinent step
reads “Wirelessly communicate info to selected device.”
Essentially the same specification has been used
in a family of applications that have given rise to a series
of issued patents dealing with different subject matter.
The specification deals at length with subjects such as
providing access to recorded music and Internet radio.
Very little of the specification relates to the subject matter of the ’379 patent claims.
2

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Several additional steps relate to the customization and
execution of a music playlist, not broadcast radio content.
’379 patent, Fig. 8.
Nothing in the flow chart or the text of the specification provides any details regarding the manner in which
the invention accomplishes the recited functions. The
specification contains several other references to radio
stations using the Internet to transmit their signals and
communicating information by using digital broadcast
signals, but it contains no further discussion of how the
invention implements the delivery of ordinary broadcast
radio signals to cellphones. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (adding a “computer aided” limitation is insufficient to constitute a
specific application where “[t]he claims are silent as to
how a computer aids the method, the extent to which a
computer aids the method, or the significance of a computer to the performance of the method”).
The idea underlying the inventions in this case is akin
to the ideas underlying the claims in several of this
court’s recent cases. In In re TLI Communications LLC
Patent Litigation, 823 F.3d 607, 610 (Fed. Cir. 2016), the
claimed invention was a “method for recording and administering digital images,” which entailed “recording
images using a digital pick up unit in a telephone unit,”
storing the images as digital images, transmitting the
digital images and classification information to a server,
and then storing the digital images in the server in light
of the classification information.
The court held that the claim at issue in TLI was abstract in that it was drawn to the abstract idea of classifying an image and storing the image based on its
classification. While the claim required the use of concrete, tangible components such as a telephone unit and a
server, the court noted that the specification made clear
that the recited physical components “merely provide a

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generic environment in which to carry out the abstract
idea of classifying and storing digital images in an organized manner.” Id. at 611.
In addressing computer-implemented patents, the
TLI court contrasted claims that are directed to an improvement in the functioning of a computer with claims
that “simply add[] conventional computer components to
well-known business practices” or consist only of “generalized steps to be performed on a computer using conventional computer activity.” Id. at 612. The claims in TLI
were not directed to an improvement in computer functionality, but were directed to “the use of conventional or
generic technology in a nascent but well-known environment.” Id. The court explained that the specification
“does not describe a new telephone, a new server, or a new
physical combination of the two,” but instead “describes
the system and methods in purely functional terms.” Id.
Thus, the court concluded, the claims “are not directed to
a solution to a ‘technological problem.’” Id. at 613.
Another case involving a similar abstract idea is Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014). The patent at issue in that case was drawn to a
method for distributing copyrighted content over the
Internet, in which a consumer would be given access to
copyrighted material in exchange for viewing an advertisement and the advertiser would pay for the copyrighted
content. The court held that “[t]he process of receiving
copyrighted media, selecting an ad, offering the media in
exchange for watching the selected ad, displaying the ad,
allowing the consumer access to the media, and receiving
payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application.”
Id. at 715.
Focusing on the additional limitations in the claims,
the court held that most of them simply described “the
abstract idea of showing an advertisement before deliver-

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ing free content.” Id. As for the remaining limitations,
the court ruled that “the addition of merely novel or nonroutine components to the claimed idea [does not] necessarily turn[] an abstraction into something concrete.”
Rather, the court explained, “any novelty in implementation of the idea is a factor to be considered only in the
second step of the Alice analysis.” Id.
Although the technology at issue in this case differs
from that involved in TLI and Ultramercial, the analysis
of the “abstract idea” step in those cases is instructive
here. As in those cases, the patent in this case involves
the conveyance and manipulation of information using
wireless communication and computer technology. While
the inventions in those cases involved tangible components, the components were conventional and were used
in conventional ways. The same is true in this case, as
the claimed cellular telephone is used to receive wireless
signals, the claimed graphical user interface is used to
display a menu of options to the user, and the claimed
broadcasting system is used as the source of streaming
content.
Affinity relies on two of this court’s cases to support
its contention that the claims in this case are not directed
to an abstract idea. The first of those cases is DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). The claims in that case recited systems used to
enable host websites to avoid losing visitors when those
visitors clicked on an advertisement on the host site.
Instead of directing the visitor to the advertiser’s website,
the claimed invention provided for the host to present a
composite web page to the visitor’s computer having the
“look and feel” of the host web page, along with content
based on product information from the advertiser’s product catalog.
We held that the patents in DDR Holdings were not
ineligible under section 101. First, we noted that the

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claims did not embody a fundamental economic principle
or a longstanding commercial practice. Rather, the challenge of retaining website visitors was a novel one “particular to the Internet.” Id. at 1257. Moreover, we held
that the claimed invention did not simply use computers
to serve a conventional business purpose; instead, the
invention was “necessarily rooted in computer technology
in order to overcome a problem specifically arising in the
realm of computer networks.” Id. The invention entailed
the storage of visually perceptible elements of numerous
websites and the construction of new, hybrid web pages
that merge the “content associated with the products of
the third-party merchant with the stored ‘visually perceptible elements’ from the identified host website.” Id.
The DDR Holdings court distinguished Ultramercial
on the ground that the claims in DDR Holdings did not
“broadly and generically claim ‘use of the Internet’ to
perform an abstract business practice,” but instead specified “how interactions with the Internet are manipulated
to yield a desired result.” Id. at 1258. Moreover, the DDR
Holdings court observed that the claims in that case
recited a specific way to automate the creation of a composite web page and did not preempt “every application of
the idea of increasing sales by making two web pages look
the same.” Id. at 1259. In short, DDR Holdings dealt
with a patent that required doing something to a web
page, not simply doing something on a web page, a difference that the court regarded as important to the issue of
patent eligibility.
That is not the case here. The patent in this case is
not directed to the solution of a “technological problem,”
Alice, 134 S. Ct. at 2358, nor is it directed to an improvement in computer or network functionality. Instead, it
claims the general concept of out-of-region delivery of
broadcast content through the use of conventional devices,
without offering any technological means of effecting that
concept.

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The second case relied on by Affinity is Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). As in
DDR Holdings, the focus of the claims in Enfish was on
“an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in
its ordinary capacity.” Id. at 1336. In this case, the
claims are directed not to an improvement in cellular
telephones but simply to the use of cellular telephones as
tools in the aid of a process focused on an abstract idea.
That is not enough to constitute patentable subject matter. See Elec. Power Grp., slip op. at 8; see also McRo, Inc.
v. Bandai Namco Games Am. Inc., No. 15-1080 (Fed. Cir.
Sep. 13, 2016), slip op. at 24 (claims held patent-eligible
because they made “a specific asserted improvement in
computer animation”).
B
In applying step two of the Mayo/Alice analysis, our
task is to “determine whether the claims do significantly
more than simply describe [the] abstract method” and
thus transform the abstract idea into patentable subject
matter. Ultramercial, 772 F.3d at 715. We look to see
whether there are any “additional features” in the claims
that constitute an “inventive concept,” thereby rendering
the claims eligible for patenting even if they are directed
to an abstract idea. Alice, 134 S. Ct. at 2357. Those
“additional features” must be more than “well-understood,
routine, conventional activity.” Mayo, 132 S. Ct. at 1298;
Ultramercial, 772 F.3d at 715.
Upon examining claim 1 and the specification of the
’379 patent, we find no “inventive concept” that transforms the abstract idea of out-of-region delivery of regional broadcasting into a patent-eligible application of that
abstract idea. The claim simply recites the use of generic
features of cellular telephones, such as a storage medium
and a graphical user interface, as well as routine func-

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tions, such as transmitting and receiving signals, to
implement the underlying idea.
That is not enough. As the Supreme Court stated in
Alice, “generic computer implementation” is insufficient to
transform a patent-ineligible abstract idea into a patenteligible invention. Alice, 134 S. Ct. at 2352, 2357. More
generally, “simply appending conventional steps specified
at a high level of generality” to an abstract idea does not
make that idea patentable. Mayo, 132 S. Ct. at 1300. The
’379 patent does not provide an inventive solution to a
problem in implementing the idea of remote delivery of
regional broadcasting; it simply recites that the abstract
idea of remote delivery will be implemented using the
conventional components and functions generic to cellular
telephones.
Addressing the same general issue, this court in Ultramercial considered whether the steps set forth in the
claims in that case embodied an inventive concept sufficient “to ‘transform’ the claimed abstract idea into patenteligible subject matter.” 772 F.3d at 715 (citing Alice, 134
S. Ct. at 2357). The court noted that the sequence of
steps did not “do significantly more than simply describe
[the] abstract method,” id., and that they were simply
“conventional steps, specified at a high level of generality,” id. at 716 (quoting Alice, 134 S. Ct. at 2357). The
court added that the fact that some of those steps had not
previously been employed in the art was not sufficient,
standing alone, “to confer patent eligibility upon the
claims at issue.” Id. at 716.
Affinity asserts that the use of a downloadable application for presenting a graphical user interface on a
cellular telephone capable of listing contents for streaming was novel as of the priority date of the patent. Even

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assuming that is true, it does not avoid the problem of
abstractness. 3
The essential advance is not in the process of downloading applications, but only in the content of this particular application, and that is nothing but a functionally
described display of information. That description does
not cross out of the abstract idea category. Elec. Power
Grp., slip op. at 4. There is no further specification of a
particular technology for getting the defined content
displayed. Thus, the user-downloadable application does
not constitute an inventive concept sufficient to render
the claims patent-eligible.
This court employed similar analysis in Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343 (Fed. Cir. 2014). That case
involved patents directed to a method of (1) extracting
data from hard copy documents using an automated
digitizing unit such as a scanner, (2) recognizing specific
information from the extracted data, and (3) storing that
information in memory. Id. at 1315. The method could be
used, for example, in an automated teller machine that
recognizes information on a scanned check.
The Content Extraction court held that the claims before it were drawn to the abstract idea of data recognition
and storage. Id. at 1346-47. In analyzing the “inventive
concept” step, the court looked to whether the claims
involved “more than performance of ‘well-understood,
routine, [and] conventional activities previously known to
the industry.’” Id. at 1347-48 (quoting Alice, 134 S. Ct. at
2359). The court held that they did not. Rather, it noted,
As the eligibility finding does not turn on the novelty of using a user-downloadable application for the
particular purpose set out in the claims, there was no
error in the district court’s not relying on Affinity’s expert’s testimony that it was a novel feature.
3

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the claims merely recited the use of existing scanning and
processing technology to recognize and store data from
specific data fields. Id. at 1348. Because it concluded
that “the basic character of [the plaintiff’s] claims is the
abstract idea of extracting and storing data from hard
copy documents using generic scanning and processing
technology,” the court held the claims patent-ineligible.
Id. at 1349.
The court in Content Extraction also held that dependent claims that added “well-known, routine, and
conventional functions” did not transform the abstract
idea into a patentable invention. Id. at 1349. The dependent claims at issue in that case closely parallel the
dependent claims at issue in this one; like the dependent
claims in Content Extraction, the dependent claims of the
’379 patent all recite functions that are not inventive but
simply constitute particular choices from within the range
of existing content or hardware, such as specifying that
the regional broadcast is FM radio or video content, that
the graphical user interface displays song information, or
that the storage medium buffers content. 4
A second case addressing the “inventive concept” step
in an analogous context is Mortgage Grader, Inc. v. First
Choice Loan Services, Inc., 811 F.3d 1314 (Fed. Cir. 2016).
The claims in that case were directed to a computerimplemented system for enabling borrowers to shop
anonymously for loans by having both lenders and borrowers upload information so that the borrower could
identify a loan package for which he would be eligible and
determine the cost before the lender was made aware of
the buyer’s identity. Viewing the claim limitations as a
In any event, as noted above, Affinity has not separately argued the patent eligibility of the dependent
claims and thus has waived any argument that those
claims should be analyzed separately from claim 1.
4

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whole, the court held that the invention was directed to
the abstract idea of “anonymous loan shopping,” even
though it involved computer-implemented communication
of particular data between prospective borrowers and
lenders. Id. at 1324.
The court rejected the argument that the computer
components recited in the claims constituted an “inventive concept.” It held that the claims added “only
generic computer components such as an ‘interface,’
‘network,’ and ‘database,’” and that “recitation of generic
computer limitations does not make an otherwise ineligible claim patent-eligible.” Id. at 1324-25 (citations omitted). The court noted that nothing in the asserted claims
purported to improve the functioning of the computer
itself or “effect an improvement in any other technology or
technical field.” Mortgage Grader, 811 F.3d at 1325
(quoting Alice, 134 S. Ct. at 2359).
A third case similar to this one is Intellectual Ventures
I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed.
Cir. 2015). There, the court found that the patent claims
were directed to the abstract idea of tailoring website
content based on the viewer’s location or the time of day
when the user navigated to the website. Id. at 1369. The
court then ruled that the recited “interactive interface”
was not a “specific application of the abstract idea that
provides an inventive concept.” Id. at 1370.
Noting that the patentee did not assert that it had invented an interactive interface that manages web content,
the court held that the interface limitation was simply “a
generic computer element” and therefore did not constitute an “inventive concept” under the second part of the
Mayo/Alice test. Id. at 1370-71; see also Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir.
2015) (“conventional and well-known limitations involving
a computer” are not an inventive concept); Internet Patents, 790 F.3d at 1346 (“a known idea, or one that is

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routine and conventional, is not inventive in patent
terms”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (“Beyond the abstract idea of
offer-based price optimization, the claims merely recite
‘well-understood, routine conventional activit[ies],’ either
by requiring conventional computer activities or routine
data-gathering steps, [which] fail ‘to “transform” the
claimed abstract idea into a patent-eligible application.’”)
(quoting Alice, 134 S. Ct. at 2357, 2359, and Mayo, 132
S. Ct. at 1294, 1298)
In arguing that the ’379 patent contains an “inventive
concept,” Affinity relies on this court’s recent decision in
BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, No. 2015-1763 (Fed. Cir. June 27, 2016). The patent
in that case was directed to systems for filtering content
on the Internet. The claims provided for individually
customizable filtering on a remote Internet service provider server.
Addressing the “abstract idea” step, the court held
that filtering content is an abstract idea, and that it
remained an abstract idea even when placed in the context of an Internet computer network. Id., slip op. at 1213. The court deferred its discussion of the specific limitations of the claims until the second step of the analysis.
Id. at 13.
With respect to that step, the court held that the
claims disclosed an “inventive concept,” consisting of “the
installation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features
specific to each end user.” Id., slip op. at 15. The invention took advantage of the ability of some Internet service
providers to associate a request for Internet content with
a specific individual account. Exploiting that capability,
the invention was able to provide customized filtering by
locating the filtering system on the Internet service
provider’s server. The specificity of the technical solution

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provided by the claims in BASCOM stands in sharp
contrast to the absence of any such specific technical
solution in the claims of the ’379 patent.
In applying the principles emerging from the developing body of law on abstract ideas under section 101, this
court has noted that claims that are “so result-focused, so
functional, as to effectively cover any solution to an identified problem” are frequently held ineligible under section
101. Elec. Power Grp., slip op. at 12. That is true in this
case, as the claims are drafted in a way that would effectively cover any wireless delivery of out-of-region broadcasting content to a cellular telephone via a network.
The only limitations on the breadth of the resultfocused, functional claims in this case are (1) that the
application used by the cellular telephone must be wirelessly downloadable, and (2) that the cellular telephone
must have a graphical user interface display that allows
the user to select the regional broadcasting channel.
Those additional limitations describe purely conventional
features of cellular telephones and the applications that
enable them to perform particular functions. They therefore do not meaningfully limit the scope of the claims.
We conclude that the claims of the ’379 patent are
drawn to an abstract idea and therefore fail to meet the
standard for eligibility under section 101.
AFFIRMED

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UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

Questions and Answers
Petitions for Panel Rehearing (Fed. Cir. R. 40)
and
Petitions for Hearing or Rehearing En Bane (Fed. Cir. R. 35)

Q. When is a petition for panel rehearing appropriate?

A. Petitions for panel rehearing are rarely considered
meritorious. Consequently, it is easiest to first answer when
a petition for panel rehearing is not appropriate. A petition
for panel rehearing should not be used to reargue issues
already briefed and orally argued. If a party failed to
persuade the court on an issue in the first instance, they do
not get a second chance. This is especially so when the
court has entered a judgment of affirmance without opinion
under Fed. Cir. R. 36, as a disposition of this nature is used
only when the appellanVpetitioner has utterly failed to raise
any issues in the appeal that require an opinion to be
written in support of the court's judgment of affirmance.
Thus, as a usual prerequisite, the court must have filed
an opinion in support of its judgment for a petition for panel
rehearing to be appropriate. Counsel seeking panel
rehearing must be able to identify in the court's opinion a
material error of fact or law, the correction of which would
require a different judgment on appeal.

Q. When is

a petition for rehearing en bane appropriate?

A. En bane decisions are extraordinary occurrences. To
properly answer the question, one must first understand the
responsibility of a three-judge merits panel of the court. The
panel is charged with deciding individual appeals according
to the law of the circuit as established in the court's
precedential opinions. While each merits panel is
.
empowered to enter precedential opinions, the ultimate duty
of the court en bane is to set forth the law of the Federal
Circuit, which merits panels are obliged to follow.
Thus, as a usual prerequisite, a merits panel of the court
must have entered a precedential opinion in support of its
judgment for a petition for rehearing en bane to be
appropriate. In addition, the party seeking rehearing en
bane must show that either the merits panel has failed to
follow decisions of the Supreme Court of the United States
or Federal Circuit precedential opinions. or that the

merits panel has followed circuit precedent, which the party
seeks to have overruled by the court en bane.

Q. How frequently are petitions for panel rehearing granted
by merits panels or petitions for rehearing en bane granted
by the court?

A. The data regarding petitions for panel rehearing since
1982 shows that merits panels granted some relief in only
three percent of the petitions filed. The relief granted usually
involved only minor corrections of factual misstatements,
rarely resulting in a change of outcome in the decision.
En bane petitions have been granted less frequently.
Historically, the court has initiated en bane review in a few
of the appeals decided en bane since 1982.

Q. Is it necessary to have filed either of these petitions
before filing a petition for certiorari in the U.S. Supreme
Court?

A. No. All that is needed is a final judgment of the Court of
Appeals.

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UNITED STATES COURT OJ' APPEALS FOR THE FEDERAL CmCillT
INFORMATION SHEET
FILING A PETITION FOR A WRIT OF CERTIORARI

There is no automatic right of appeal to the Supreme Court of the United States from judgments
of the Federal Circuit. You must file a petition for a writ of certiorari which the Supreme Court
will grant only when there are compelling reasons. (See Rule 10 of the Rules of the Supreme
Court of the United States, hereinafter called Rules.)
Time. The petition must be filed in the Supreme Court of the United States within 90 days of
the entry ofjudgment in this Court or within 90 days of the denial ofa timely petition for
rehearing. The judgment is entered on the day the Federal Circuit issues a final decision in your
case. [The time does not run from the issuance of the mandate, which has no effect on the right
to petition.] (See Rule 13 of the Rules.)
Fees. Either the $300 docketing fee or a motion for leave to proceed in forma pauperis with an
affidavit in support thereof must accompany the petition. (See Rules 38 and 39.)
Authorized Filer. The petition must be filed by a member of the bar of the Supreme Court of
the United States or by the petitioner representing himself or herself.
Format of a Petition. The Rules are very specific about the order of the required information
and should be consulted before you start drafting your petition. (See Rule 14.) Rules 33 and 34
should be consulted regarding type size and font, paper size, paper weight, margins, page limits,
cover, etc.
Number of Copies. Forty copies of a petition must be filed unless the petitioner is proceeding in
forma pauperis, in which case an original and ten copies of the petition for writ of certiorari and
of the motion for leave to proceed in forma pauperis. (See Rule 12.)
Where to File. You must file your documents at the Supreme Court.
Clerk
Supreme Court of the United States
1 First Street, NE
Wasbington, DC 20543
[phone]
No documents are filed at the Federal Circuit and the Federal Circuit provides no information to
the Supreme Court unless the Supreme Court asks for the information.
Access to the Rules. The current rules can be found in Title 28 of the United States Code
Annotated and other legal publications available in many public libraries.

Revised December J 6, 1999

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