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Video Streaming Patent Found Unpatentable Under 35 U.S.C. § 101 For Being Directed Towards an Abstract Idea

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The Court in District of Delaware invalidated VideoShare’s U.S. Patent Nos. 8,438,608 and 8,464,302 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter. Specifically, the Court granted Google’s motion for judgment on the pleadings because the asserted video streaming patents claimed an abstract idea, which are not patentable.

VideoShare’s ’608 patent generically claimed a method for streaming a video by (1) “converting the video file into a streaming video file,” (2) “generating an identification tag” identifying the file, and (3) “embedding the identification tag” into a web page. The ’302 patent claimed a method for streaming video by (1) converting a video file into a streaming file, (2) storing the video on a storage device, (3) associating the video with an advertisement, (4) generating and embedding a tag into a webpage, and (5) receiving a request to transmit the streaming video file.

The Court applied the Federal Circuit’s two-step analysis for identifying whether a claim is patentable under 35 U.S.C. § 101 by identifying (1) the subject matter that the claims are “directed to” an abstract idea, and (2) whether the elements of the claim contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. The Court disagreed with Google and VideoShare’s analysis on both of these points, and, after much analysis, held that the claims were (1) directed to the abstract idea of “preparing a video in streaming video format for sharing over a computer network,” and (2) the claim did not contain an inventive concept to transform the idea into a patent-eligible application.

The Court did not find a transformative inventive concept in the claims because the patent disclosed that off-the shelf algorithms to carry out the claimed processing steps. VideoShare, LLC v. Google Inc. p. 6 (“[T]he claims are not directed to an improvement in computer functionality, and the physical components of the claim merely provide a generic environment for carrying out the abstract idea.”). Moreover, the Court noted that the claims of the ’608 and ’302 patents were not directed to “an improvement in computer functionality” because “VideoShare did not invent the technology that converts video files into streaming format” (it simply used off-the shelf algorithms), and because “Video Share did not invent thumbnails, the extraction of such thumbnails from video files, or the embedding of thumbnails.” The Court was not persuaded by Videoshare’s argument that “the inventive aspect of [the identification tag] limitations is not creating a thumbnail or adding a link to a webpage but rather using a webpage that includes identifying thumbnails to serve video files over a network” because “the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the idea to a particular technological environment,” citing Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358 (2014); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“As we have held, the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under§ 101”). In 2017, the Federal Circuit affirmed this result of ineligible subject matter.

VideoShare, LLC v Google Inc. et al, 1-13-cv-00990 (DED August 2, 2016) (Sleet, J.)