No Patent-Eligibility for “Identifying and Characterizing Errant Electronic Files”

Case:  Intellectual Ventures I LLC v. Erie Indemnity Co., No. 2:14-cv-220 (W.D. Pa. Aug 4, 2016)

Result: Rule 12 motion to dismiss granted based on invalidity of claims of U.S. Patent 7,757,298 under 35 U.S.C. § 101.

Patent: U.S. Patent 7,757,298, entitled “Method and Apparatus for Identifying and Characterizing Errant Electronic Files.”  Representative claim 1 recites:

A computer-implemented method for identifying and characterizing stored electronic files, said method comprising:

under control of one or more configured computer systems:

selecting a file from a plurality of files stored in a computer storage medium, wherein selecting the file is performed according to at least one of:

selecting the file based on the size of the file by determining whether an aggregate size of plural identically-sized files exceeds a predetermined threshold;

selecting the file based on whether content of the file matches a file type indicated by a name of the file; or

selecting the file based on whether the file comprises data beyond an end of data marker for the file;

generating an identification value associated with the selected file, wherein the identification value is representative of at least a portion of the content of the selected file;

comparing the generated identification value to one or more identification values associated with one or more of a plurality of unauthorized files; and

characterizing the file as an unauthorized file if the identification value matches one of the plurality of identification values associated with the unauthorized files.

Abstract Idea (Alice Step 1): “identifying and categorizing files based on a set of predetermined criteria.”  The claims were directed to screening files for illicit content like pornography.  Representative claim 1, the court explained, could

be boiled down to four fundamental steps: (1) selecting a file; (2) generating a unique value corresponding to the file; (3) comparing that unique value to a bunch of previously generated values that correspond to different types of illicit files; and (4) marking the file for deletion or other treatment if its assigned value matches a known one.

Inventive Concept (Alice Step 2): The court found none:

that the claims recite specific computer-implemented steps is not enough to supply an inventive concept. . . .  The steps specified by Intellectual Ventures (selecting files based on file size, a mismatch between the content and file type, the existence of data beyond the end of a data marker within the file, and the match of a specific identification value; generating a specific identification value; and determining if that value matches another value) are generic functions, even if performed by a computer. . . .  Selecting files based on identifiers and matching different files/identifiers is just what computers do. There is nothing inventive about it.