Claims That Are Entirely Functional in Nature Are Not Patent-Eligible Under Mayo/Alice

In Affinity Labs of Texas, LLC v. DirecTV, LLC, Nos. 2015-1845-48 (Fed. Cir. Sept. 23, 2016), the Federal Circuit affirmed a district court order granting a motion to dismiss, holding that the asserted patent, directed to wireless streaming of regional broadcast signals to cell phones located outside the service region, was invalid based on lack of patentable subject matter.

In applying the first step of Mayo/Alice—determining whether the claim is directed to a patent ineligible concept (i.e., abstract idea)—the Court held the claimed invention was an abstract idea and “entirely functional in nature.” The Court found that missing from the claims was how to implement out-of-region broadcasting on a cell phone, and the specification was similarly deficient and in fact underscored the abstract nature of the invention.

Turning to the second step—determining whether the elements of the claim add enough to transform the nature of the claim into a patent-eligible application (i.e., inventive concept)—the Court found no inventive concept because the claims recited the idea to be implemented using the generic features of cell phones. The Court rejected the purported novelty of using a downloadable application, reasoning that the application in substance was described functionally and the specification did not disclose a technology to accomplish that application. The Court reiterated preemption concerns that claims that are so “result-focused” and functional in nature as to effectively cover any solution may risk patent eligibility.