Patent claims to storing ad data based on user preferences locally at a user’s video player were confirmed invalid in Customedia Techs., LLC v. Dish Network Corp., No. 2018-2239, 2020 U.S. App. LEXIS 7005 (Fed. Cir. March 6, 2020). To enable the claimed technology, a cable distributor would provide customers with a set-top box having built-in storage sections. As a result, the distributor could lease or sell those storage sections to advertisers. Customedia sued DISH for infringing its patents covering this technology. DISH petitioned the U.S. Patent Office for Covered Business Method review of the asserted patent. There, the Board found all the claims were directed to subject matter ineligible for patenting. The Board also held certain claims were anticipated by the prior art. Customedia appealed to the U.S. Court of Appeals for the Federal Circuit.
The Court’s Decision
On appeal, the Court focused primarily on the subject-matter eligibility challenge to the claims. The Court characterized the claims as being directed to delivering targeted advertising to a user, which was an abstract idea because it was a fundamental business practice. According to Customedia, by dedicating a section of the computer’s memory to advertising data, the claimed invention ensured memory was available for at least some advertising data. However, the Court found this to be an improvement in delivering targeted advertising straightforwardly using a computer as a tool, not an improvement to the computer’s functioning. It emphasized that the only improvements highlighted in the patent’s specification were generic speed and efficiency improvements resulting from using a computer for any task. Invoking already-available computers was insufficient to render the abstract concept of targeted advertising patent-eligible.
This case highlights the need to perform a thorough patentability search before a practitioner drafts a patent application. With a better view of the landscape, the practitioner has a better chance of capturing in the application itself what the advance over the prior art really is. It also highlights the benefit of describing with particularity any technological benefits realized by an invention. In this case, it’s possible that additional detail on reducing network bandwidth or customization responsive to user input could have been added to the application. In such a situation, the claimed local storage potentially could have demonstrated a technological improvement, rendering the claims patent-eligible.
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