Imagine That IP Law Blog

On September 3, 2024, the United States Court of Appeals for the Federal Circuit rendered a significant decision in Broadband iTV, Inc. v. Amazon.com, Inc., which reaffirms the stringent approach towards patent eligibility under 35 U.S.C. § 101. The case concerned five patents owned by Broadband iTV (BBiTV), all related to video-on-demand technology and electronic program guides. BBiTV accused Amazon of infringing these patents, but Amazon successfully moved for summary judgment on the grounds that the patents claimed ineligible subject matter. The Federal Circuit affirmed the district court's ruling, applying the now well-established two-step Alice test.

Background of the Case
BBiTV asserted five patents against Amazon, with four of them being related (the '026 patent family) and one, the '825 patent, being separate but covering similar technology. The patents focused on electronic program guides used in video-on-demand systems. Essentially, the claims described systems where video content and metadata were uploaded to a server, which would automatically generate a hierarchically structured program guide to help users navigate video content on demand. The '825 patent added a method for personalizing these guides based on a user's viewing history, aiming to optimize the user experience by dynamically adjusting the program guide's structure.

The crux of Amazon’s defense was that all of the asserted claims were directed towards abstract ideas and, therefore, were not patent-eligible under § 101. The district court agreed with Amazon, ruling that both the '026 patent family and the '825 patent were directed towards abstract ideas, such as organizing content based on metadata and suggesting categories based on viewing history. BBiTV appealed the decision, but the Federal Circuit sided with Amazon, affirming the district court’s ruling.

The Alice Test in Action
The Federal Circuit's decision hinged on the application of the Alice Corp. v. CLS Bank framework, which is used to determine whether a patent claim is directed to patent-eligible subject matter. The Alice test has two steps:

Step One: Is the claim directed to an abstract idea, law of nature, or natural phenomenon?
In this case, the court determined that the claims of both the '026 patent family and the '825 patent were indeed directed towards abstract ideas. The '026 patent family focused on the abstract idea of organizing content hierarchically based on metadata—a longstanding practice applied in the digital context. The '825 patent, on the other hand, was seen as covering the abstract idea of collecting user data (in this case, video viewing history) and using it to adjust the presentation of content—akin to what video store clerks had done for years when recommending films.

Step Two: Does the claim include an “inventive concept” sufficient to transform the abstract idea into a patent-eligible application?
Here, the court found that BBiTV’s patents failed at step two as well. Although the claims involved servers, templates, and program guides, these elements were all deemed generic and conventional. The court noted that simply automating an abstract idea or applying it in a computerized environment does not render it patent-eligible. There was nothing in the claims that constituted an "inventive concept" that could transform the abstract idea into a patent-eligible invention. The use of hierarchical structures, metadata, and templates were all seen as routine and conventional practices, insufficient to meet the requirements of § 101.

Accordingly, the Court held that “the ’025 patent family  claims [and] the ’825 patent claims do not claim a technological  solution to a technological problem.” Broadband iTV, Inc. v. Amazon.Com, Inc., 2024 U.S. App. LEXIS 22270, *25 . Therefore, both patents failed  steps of the Alice framework were determined to be directed to ineligible subject matter under 35 U.S.C. §101.

Implications for Software and Tech Patents
The Broadband iTV case is a reminder of how challenging it can be for software and technology patents to survive scrutiny under § 101. The Federal Circuit's decision continues a trend where courts focus on whether a claim adds something "significantly more" than an abstract idea, especially in cases involving data organization, user interfaces, and content delivery systems.

Patent owners in the tech space should take heed of the court's analysis here. Merely incorporating conventional elements like servers or templates, or applying a well-known process in a digital context, may not be enough to secure patent eligibility. Applicants should aim to draft applications that highlight specific technical improvements or novel methodologies to avoid § 101 rejections.