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By Tony Dutra
Nov. 30 — Collarity Inc.'s improvement to Internet searches is not eligible for patenting, the U.S. District Court for the District of Delaware held Nov. 25.
The court held that Collarity's methods of refining search phrases before conducting a query were based on abstract ideas that have been used by researchers and librarians, without computers, for years.
The court also rejected Collarity's contention that the Patent and Trademark Office had effectively blessed its patent by issuing a second patent, on a continuation application, after the U.S. Supreme Court's decision in Alice v. CLS Bank.
Judge Mary Pat Thynge's analysis did not differ substantially from the majority of district court decisions against patent eligibility, under 35 U.S.C. §101, since Alice Corp. Pty Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2014 BL 170103, 110 U.S.P.Q.2d 1976 (2014) (119 PTD, 6/20/14).
Collarity's U.S. Patent No. 7,756,855 claims ways of taking a user's search phrase and generating “a refined search query” with substitute terms. The court cited examples, from as early as 1974, of legal librarians performing that same task in their minds before beginning a search of documents and books.
The court did not further identify any abstract idea in the claims, saying only that it was “known outside of a computer or Internet context and could be practiced using only the human mind.” The court also found no inventive concept—under “Alice step two”—that would elevate the invention to something more than the ineligible abstract idea.
The twist in the case related to the timing of Collarity's follow-on actions. It filed this lawsuit in 2011 and did not make claim construction arguments until March 2013. Collarity simultaneously filed its continuation application with claims “so similar it filed a terminal disclaimer to avoid a double patenting rejection based on that similarity.” That ultimately issued as U.S. Patent No. 8,812,541 on Aug. 19, 2014, which was two months after Alice was decided.
“Collarity's position appears to be that any patent issued post-Alice would be inoculated from invalidity under Section 101,” Thynge said. “That is not the case.”
Thynge noted that Section 101 was not considered in the examiner's review of the application. And in any case, she said, it is still up to the district court to make a patent eligibility decision as a matter of law, regardless of what the PTO decides.
The court granted Google's motion for summary judgment of patent ineligibility and closed the case.
Richard K. Herrmann of Morris James LLP, Wilmington, Del., represented Collarity. Richard L. Horwitz of Potter Anderson & Corroon, LLP, Wilmington, Del., represented Google.
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