The Eastern District of Virginia recently dismissed a patent infringement claim, holding that the asserted claim directed to natural speech processing is patent ineligible under 35 U.S.C. § 101, because it fails the Alice framework. Under step one, the court found the claim is directed to an abstract idea, because it is "plainly result-oriented" and "directed to any arrangement of programs and processors." Under step two, the court found the claim lacks an inventive concept, because it does not explain how its "conclusory, result-oriented requirements" overcome the defects in prior art.
Dialect, LLC v. Amazon.com, No. 1:23-cv-581 (E.D. Va.).
Dialect sued Amazon for infringing seven patents. Amazon moved to dismiss six of the patents for patent ineligibility under § 101. The court only considered the asserted claim of one patent, deferring a ruling on the others until further proceedings. The claim at issue is from U.S. Patent No. 9,031,845, which is directed to a vehicle-mounted system of physical processors programmed to process natural speech. The court summarized the claim as a set of prior art physical processors that: (1) perform speech recognition; (2) use the parsed and interpreted message to choose a piece of software to address the message; (3) translate the message into a form the selected sub-processor can understand; (4) determine whether the formulated command or query is to be executed on or off-board the vehicle; and (5) either execute the command at the vehicle or send it to the off-board destination using a wireless wide area network.
The court analyzed eligibility using the Supreme Court's two-step Alice framework. In step one, a court determines whether the claims, in their entirety, are "directed to a patent-ineligible concept," such as an abstract idea. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014). If they are, the court proceeds to step two—the search for an "inventive concept"—and considers "the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. (citing Mayo Collaborative Servs. v. Prometheus Lab'ys, Inc., 566 U.S. 66, 78-79 (2012)).
1. Alice Step One
Addressing Alice step one, the court concluded that the claim is directed to the abstract idea of using context to execute a spoken request. The court considered examples of abstract claims from the Federal Circuit, such as claims directed to a process for which computers are invoked merely as a tool, claims reciting mental processes (e.g., collecting and analyzing data), and claims that recite result-based functional language. The court found that the asserted claim is "plainly result-oriented" because it is directed to "any arrangement of programs and processors that accomplishes Claim 1's stated goal." The court also found that the asserted claim recites functionality, "regardless of the method of deployment" and "using exclusively generic, prior-art components." In addition, the court decided that the claimed process—essentially, "understanding language using context, determining whether an on- or off-board processor is to handle that language, and then using that processor to execute the language"—is no less abstract than the collection of information, comprehension of its meaning, and the indication of the results, which is an idea the Federal Circuit has repeatedly found to fail Alice step one.
The patent owner argued that the claim is directed to a "specific improvement to vehicle-based systems" and not an abstract idea, because it "recites a system that formulates a command or query based on a domain and context ... [and] recites determining whether that command or query is to be executed on-board or off-board the vehicle." The court rejected this argument because "it inappropriately considers Claim 1's elements in isolation from one another." The court explained that Alice step one requires that a claim be assessed "in [its] entirety" to determine its "focus."
2. Alice Step Two
Addressing Alice step two, the court concluded the claim lacked any inventive concept. The court first filtered out from the claim the use of the ineligible abstract idea itself and found that the only aspect that remains is "determining whether [the] command or query is to be executed on-board or off-board the vehicle" and then executing it. The court found there was nothing inventive about this portion and that the patent owner did not plead any facts that would demonstrate this "conclusory step" is not "well-understood, routine, and conventional to a skilled artisan in the relevant field."
The patent owner argued that the asserted claim discloses "specific improvements" because prior art systems "relied solely on keywords to determine whether processing should be performed on-board or off-board the vehicle" rather than using context as in claim 1. The court rejected this argument because it "rests on novelty, not inventiveness." The court reasoned that a claim element that adds "nothing of significance to the underlying abstract idea is, no matter how novel, insufficient to salvage an invalid claim at Alice Step Two." The patent owner also argued inventiveness because claim 1 discloses "a novel configuration of software structures." The court rejected this argument as conclusory because the patent owner did not explain how. The patent owner pointed to an embodiment in the specification, but the court noted that "features that are not claimed are irrelevant" to the Alice analysis.
Practice Tip: Patent owners should avoid claiming a result and instead claim the means to achieving that result. Patent owners should claim with specificity rather than using general language that direct claims to any arrangement of system components. Patent owners should avoid equating the novelty analysis with the inventive analysis, as the two are separate inquiries. Patent owners should also state limitations in the claim when asserting inventiveness, as limitations in the specification are not enough.
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