Grecia v. The Bank of New York Mellon Corporation

Background

The opinion addresses five nearly identical patent-infringement cases brought by William Grecia against Bank of New York Mellon Corporation, Citibank, N.A., Morgan Stanley Smith Barney LLC, TIAA, FSB doing business as TIAA Bank, and Samsung Electronics America, Inc. The court used the first-listed case, against Bank of New York Mellon Corporation, as representative of the others. The opinion lists the other case numbers as 19-CV-2811 (VEC), 19-CV-2812 (VEC), 19-CV-2813 (VEC), and 19-CV-3278 (VEC).

Grecia is the inventor of U.S. Patent No. 8,887,308, which concerns digital-rights-management technology for controlling access to digital content. Claim 1 describes a process that receives a user’s access request and verification information, authenticates the information, communicates with another database through an application programming interface, receives an identifier, and stores the information in a computer-readable authorization object for use in later access requests. Grecia alleged that the Banks’ financial applications and Samsung Pay directly infringed Claim 1.

The defendants moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal when a complaint does not allege enough facts to state a legally plausible claim. They argued, among other things, that Claim 1 was not eligible for patent protection under 35 U.S.C. § 101 and the Supreme Court’s Alice framework.

Prematurity and claim construction

Grecia argued that the motions were premature because the parties disagreed about whether another proceeding was needed to interpret the patent’s claim terms. The court rejected that argument. It explained that patent-eligibility may be decided at the motion-to-dismiss stage and that a court may adopt the nonmoving party’s proposed meanings or resolve only the claim-interpretation issues needed for the eligibility analysis.

The court accepted Grecia’s proposed constructions. It found that the parties did not dispute the meaning of terms relevant to patent eligibility and that no factual allegations prevented the court from deciding eligibility as a matter of law.

Patent-eligibility analysis

The court applied the two-step Alice/Mayo test. First, it asked whether Claim 1 was directed to an abstract idea. If so, it would ask whether the claim contained an inventive concept sufficient to turn that idea into a patent-eligible application.

At step one, the court held that Claim 1 was directed to the abstract idea of storing information about permission and identity for processing access requests. In the court’s view, the claim did not explain how to use those data types to improve computer functionality. Instead, it broadly covered any method of storing proof of a user’s permission and identity in a data store for later access decisions.

The court examined the claim’s six steps: receiving an access request and verification token; authenticating the token; establishing communication with another database; requesting query data; receiving that data; and creating an authorization object by writing the verification or query data into storage. It concluded that these steps used generic computer components and functional terms without specifying a particular technical solution for achieving interoperability across devices.

The court compared Claim 1 to patent claims that had been found eligible because they described specific improvements to computer technology. It found Claim 1 more like claims that merely used computers as tools to carry out an abstract process. The court also used an analogy involving a military police officer, a soldier’s identification, a call to headquarters, and a written log to illustrate its view that people could perform the same authorization process without computers.

At step two, the court held that Claim 1 lacked an inventive concept. The references to an authorization object, the Internet, databases, and other computer components were, in the court’s view, routine computer-assisted steps and did not add enough to make the abstract idea patent eligible. The court rejected Grecia’s argument that writing a verified web-service account identifier into a data store supplied the required inventive concept because it was essentially the same abstract idea identified at step one.

Because the court found Claim 1 ineligible, it did not reach the defendants’ alternative argument that Grecia had failed to allege that their applications performed every step of the claimed method.

Ruling

Judge Valerie Caproni granted the defendants’ motions to dismiss. The court dismissed Grecia’s complaints with prejudice without leave to amend, directed the Clerk of Court to close all captioned cases and open motions, and entered no separate ruling on the defendants’ alternative infringement-element argument.