PublishedJune 7, 2017

ContentGuard: Validity and Privilege

Monday I summarized the history of the ContentGuard cases, and yesterday I described the process of claim interpretation.  Today, we’ll turn to an issue that we’ve focused on recently, patent validity.  ContentGuard convinced the jury that the ContentGuard patents were valid—can they convince the Federal Circuit?

Abstract Ideas

We’ve written a lot about patents on abstract ideas on Patent Progress.  It’s one of the major tools used by defendants to protect against poor quality and over-broad patents.  So it shouldn’t come as a surprise that one of the reasons that Apple and Google say the ContentGuard patents are invalid is because they’re directed to abstract ideas under 35 U.S.C. § 101. 

Why 101?

One reason defendants tend to rely on § 101, both before trial and on appeal, is that it’s a question of law rather than a question of fact.  Questions of fact are for the jury to decide, but judges decide on questions of law.  

This means that—unlike invalidity based on prior art, which is a partially factual issue—you don’t have to wait for trial to determine whether a patent is invalid because it claims an abstract idea.  In ContentGuard, for example, Judge Gilstrap ruled that the ContentGuard patents were patent-eligible more than a year before trial.  You also see a lot of appeals on questions of eligibility because it’s reviewed de novo.  This means that the Federal Circuit reviews patent eligibility without any requirement to defer to the decision by the District Court.  

How Do You Decide What’s Abstract?

The basic test for § 101 eligibility after Alice has two steps.  First, is it directed to an ineligible concept such as an abstract idea?  Second, does it show sufficient “inventive concept” to be something more than just the abstract idea?

This basic test has been developed further in a number of subsequent Federal Circuit cases.  One particularly important one was the McRO case, which dealt with a technique for synchronizing computer animation of faces with voices so that the lips match up with the words.  The Federal Circuit decided that the McRO patents were patent-eligible because they weren’t directed to the abstract idea of animating a face, but rather to a particular and specific technique for doing so.

Are The ContentGuard Patents Abstract?

In the cases in the Eastern District of Texas, the defendants asserted that the patents are invalid because they’re directed to an abstract idea.  Judge Gilstrap denied their motion.  He determined that the patents weren’t directed to the abstract idea of enforcing usage rights, but rather to specific solutions to the problem of enforcing usage rights.  So, like the claims in McRO, the claims here weren’t directed to an abstract idea under step 1 of the Alice test.  Judge Gilstrap also determined that, even if the claims were directed to an abstract idea under step 1, the specific solutions provided an “inventive concept” sufficient to distinguish the claims from any abstract idea and therefore they were not abstract under step 2 of the Alice test.  In particular, Judge Gilstrap focused on three “integrities” required by the constructions he had decided on.  Based on this, he found the patents to be patent-eligible.

Apple and Google argue that Judge Gilstrap incorrectly understood the technology at issue, which does no more than implement restrictions on temporary loans of content, just like a library.  And even if the three integrities that Judge Gilstrap focused on set the patent apart from the simple idea of usage restrictions, Apple and Google point out that the inventor conceded that he hadn’t invented the integrities.  In other words, they were conventional computer functions.  And, according to the Intellectual Ventures v. Symantec case, incorporating “conventional steps … is not sufficient to supply the inventive concept.”  In other words, the defendants’ position is that ContentGuard admitted that their patents are simply conventional steps put together in conventional ways to perform an abstract idea, and thus are not patent-eligible.

Google also goes a bit further, pointing out that if ContentGuard is right about the claim construction for “usage rights,” then their argument for eligibility under § 101 is weaker.  Part of Gilstrap’s rationale for finding the claims non-abstract was that “attaching” the usage rights to the content provided a meaningful inventive concept over the prior art.  But if ContentGuard is right and attachment isn’t required, then that inventive concept seems to have disappeared; the claims are now much more abstract, simply describing usage rights that are in some way associated with content.  Given that, ContentGuard is either wrong about the claim construction (in which case Google doesn’t infringe) or wrong about whether the claims are abstract (in which case ContentGuard’s patents aren’t valid.)

Alice Isn’t The End For Software Patents

The ContentGuard patents are a good example of how, despite the gnashing of teeth coming from some patent lawyers, reports of the death of software patents due to § 101 are greatly exaggerated.  These patents, which are indisputably software patents, survived a § 101 challenge.  They point out the path forward that every patent lawyer I know has already seen—if you want to get a software patent allowed, you need to show how it works in as much detail as possible, not just in broad functional terms, and you need to show how that’s different from what was conventional.

I’d expect this issue to take up most of the Apple and Google argument time, as well as much of the panel’s interest.

Prior Art

Patents have to be directed to patent-eligible subject matter, or else they’re invalid.  But they also have to be new and non-obvious (or else they’re invalid.)  Prior art is how you show that a patent isn’t new, or is obvious.  Earlier work that does the same thing as the claimed invention, or that would have made the claimed invention obvious, is invalidating prior art.

At trial, the jury decided that Apple and Google hadn’t provided prior art that showed the ContentGuard patents were old, or obvious, when they were invented.  Google presented one set of references; Apple presented another.  (Generally, if a jury has found that a set of references don’t invalidate a patent, you don’t try the same references over again with a new jury.)

Google has two major arguments.  First, they point out that if ContentGuard’s claim construction for “usage rights” is right then their patent is obvious.  ContentGuard’s own expert said that one of Google’s references (called the “Griswold” reference) didn’t “attach or treat as attached” the usage rights.  But ContentGuard is now arguing that that definition is wrong, and that usage rights are just “associated”; Google explained how Griswold associates usage rights and content.  So again, ContentGuard is in a position where either their patent isn’t infringed or else it’s invalid.

Second, both Google and Apple assert that certain prior art references describe everything in the ContentGuard patents and that the jury got it wrong with respect to that prior art.  While Google and Apple each point to different pieces of prior art, the core of the argument is the same for both—the jury couldn’t reasonably have found that the prior art didn’t render the claimed invention obvious.

There’s a high standard for invalidity based on prior art; you have to provide clear and convincing evidence that the patent isn’t valid.  It’s a tall order, especially when a jury has already found against you, and I’d expect that the prior art invalidity arguments won’t be a focus during the arguments at the Federal Circuit.

There’s One More ThingPrivilege

In the Google case, ContentGuard initially gave Google copies of one of the inventor’s notes from the time of invention, which described how prior art discloses some portions of his invention.  ContentGuard later “clawed back” those notes, claiming that they were privileged.  ContentGuard also refused to give Google copies of some of the other invention documents for the same reason.

You’ve probably heard of the “attorney-client privilege,” at least in a police procedural.  It’s supposed to protect communications between an attorney and their client.  

As far as I can tell based on the filings in this case (because I, like Google, am not allowed to see the documents), none of the ContentGuard documents were created by a lawyer.  None of the ContentGuard documents were sent to a lawyer.  None of the ContentGuard documents were made on behalf of a lawyer, or intended for a lawyer, or in any way touched a lawyer’s hands as part of their creation.  Nevertheless, ContentGuard asserted attorney-client privilege and refused to provide them to Google.  Google asked a court to force production of those documents, and the court refused.   (Frankly, I can’t imagine what possible rationale there was to say the documents were privileged.  The court didn’t bother to explain the ruling.)

Why Does It Matter?

ContentGuard’s inventors testified at trial, apparently giving testimony that their invention notes contradicted.  Normally you’d show them their notes to prove they were lying on the stand and let the jury decide how much to trust someone who lies under oath.  That’s hard to do when you can’t use the notes, because they were clawed back.

While it’s likely to be given relatively minor attention in the Google appeal (it wasn’t raised by Apple), this is actually a fairly important issue in the larger scheme of things.  Inventor’s notes and invention disclosures are widely created in many industries.  I’ve written up a few of my own back when I was an engineer, and I’ve read quite a few as a lawyer.  

Those notes often have an accurate sense of what the inventor really thought they had invented, and also often describe how it’s better than whatever the current technology is—which means that they show both what was prior art, and what the inventor knew was prior art.  Because of this, they can be incredibly useful in litigation, both to find prior art, and as proof of whether the inventor was honest with the Patent Office.  As a patent applicant, you have to tell the Patent Office about prior art you know about; if you intentionally omit prior art, then your patent might be declared unenforceable.  So if your invention notes discuss something, but you never told the Patent Office about it, that’s a problem.  But defendants have no way of knowing that if they can’t see your notes.

Privilege and SEPs

One arena in which invention disclosures and inventor’s notes are particularly useful is in standard-essential patent (SEP) disputes.  These disputes tend to involve either major telecommunications companies or patents created at major telecommunications companies.  And typically, those companies have policies where employees who come up with ideas file invention disclosures.  So for most standard essential patents, there’s an invention document somewhere that describes the idea and typically whatever the current alternatives are.  (Sometimes, the document will even say something like “once we put this into the standard everyone will have to infringe.”)

So if these documents are considered to be privileged so that defendants can’t see them, it creates an issue where plaintiffs can take advantage of favorable information in the disclosure, but can avoid giving the defendant anything that might make their case look worse.

Hardly fair, right?

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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