May 4, 2021

Federal Circuit: Requesting, Transmitting, Receiving, Copying, Deleting, and Storing Data Records Is an Abstract Idea

Holland & Knight Section 101 Blog
Allison M. Lucier
Section 101 Blog

A recent decision by the U.S. Court of Appeals for the Federal Circuit highlights the importance of describing any improvements to technology in the specification.

In the case of Whitserve LLC v. Dropbox, Inc., WhitServe asserted a patent against Dropbox directed to "safeguarding customer/client data when a business outsources data processing to third-party Internet-based systems" by backing up the internet-based data to a client's local computer.

The U.S. District Court for the District of Delaware dismissed the complaint, finding that the claims were directed to the abstract idea of "backing up data records," because it "is a well-understood practice of human organization that backup copies are stored in a location separate and distinct from the original location." The court also found that claims were not directed to an improvement in computer functionality, noting that the representative claim "recites only generic computer components performing routine computer functions."

The Federal Circuit affirmed on April 26, 2021, the lower court's findings, agreeing that the claims recite an ineligible abstract idea.

Federal Circuit's Section 101 Analysis

On appeal, WhitServe argued that the claims were not directed to an abstract idea because they involved a technological improvement for "a system for onsite storage of a backup copy of Internet-based data that has been updated or deleted over the Internet by the client, which improves the storage, access, flexibility, and security of data processing." In applying step one of the Mayo/Alice analysis, the Federal Circuit disagreed, finding that "the system is for requesting, transmitting, receiving, copying, deleting, and storing data records," which "is a fundamental business practice that existed well before the advent of computers and the Internet."

WhitServe further argued that the claims were not directed to an abstract idea because they were directed to a practical solution to an internet-based problem – specifically, onsite storage as opposed to offsite storage – and not simply directed to "storing any data in a general form." The Federal Circuit disagreed, finding that this "does not alter the conclusion that the claims are directed to the abstract idea of maintaining data records."

WhitServe also claimed that its invention was patent eligible because it represented an improvement in the technological process. However, the court noted that the specification did not "explain the technological processes underlying the purported technological improvement."

Turning to step two of the Mayo/Alice analysis, the Federal Circuit said there was no inventive step because the claims "recite generic computer components performing routine conventional functions." The court noted that WhitServe failed to describe any technical improvement over conventional methods. On the contrary, the specification made clear that "the ability to edit and modify data was well-known" and therefore "cannot constitute an inventive concept."

Lastly, the Federal Circuit found that there were no factual issues that precluded dismissal of the case at the pleadings stage. The court noted that "[p]atent eligibility may be determined on the intrinsic record alone where, as here, the specification provides that the relevant claim elements are well-understood, routine and conventional."

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