Overview
Results-oriented patent claims continue to face significant risk under 35 U.S.C. § 101. In US Patent No. 7,679,637 LLC v. Google LLC (yes, an LLC was named after the patent), the Federal Circuit once again drew a clear line on patent eligibility, this time holding that claims directed to web-conferencing systems with time-shifting capabilities were ineligible abstract ideas.
Section 101 allows patents for processes, machines, manufactures, and compositions of matter, while judicially-created exceptions exclude laws of nature, natural phenomena, and abstract ideas. Courts apply the two-step framework set forth in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories (the Alice/Mayo test) to determine eligibility. Under this framework, courts ask (1) whether the claims are directed to an ineligible concept (law of nature, natural phenomena, or abstract idea) and, if so, (2) whether the claims include an inventive concept sufficient to transform that otherwise ineligible concept into patent-eligible subject matter. In doing so, courts look at the specification to understand the problem the inventor sought to solve, whether any technological improvement is embodied in the claims, and whether the claims explain how that improvement is achieved.
The claims of the ʼ637 patent relate to a web-conferencing system that includes a first client application used by the presenting participant sharing screen video data, a system recording the stream, and a second client application used by an observing participant that can both view the live screen and selectively view the prior recorded screen video.
Applying step one, the Federal Circuit found the ’637 patent was focused on the abstract idea of “applying known time-shifting functions to web-conferencing systems” to address inefficiencies caused by participants joining late or missing parts of a presentation. In software cases, the abstract idea inquiry often turns on whether the claims recite a specific improvement in computer capabilities. Here, the Court found the claims to be results-oriented, because they failed to explain how the client applications manipulated data streams to achieve asynchronous review. The claims described the desired outcome, not a clear technical solution.
At step two, the Federal Circuit rejected the patentee’s argument that the alleged inventive concepts—a two-client application system and a time-scale modification component—transformed the claims into patent-eligible subject matter. In addition to the logic applied under step one, the Court emphasized that these elements were implemented using conventional, well-known components operating in their ordinary manner. Using results-oriented claim language without specific implementation details, and routine technology, was not enough to satisfy the inventive concept requirement under Alice.
This decision is the latest of a long line of cases scrutinizing results-oriented claims. In 1852, the Supreme Court in Le Roy v. Tatham held claiming a concept without the specific step to carry out the process “would prohibit all other persons from making the same thing by any means whatsoever,” and, therefore, such claims are not patent eligible. The Federal Circuit has enforced that rule over the past decade. The Court routinely holds that functional claims reciting results without the means to achieve them are not patent eligible under Section 101. E.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018); Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020); In re Killian, 45 F.4th 1373 (Fed. Cir. 2022); Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025). The claims of the ʼ637 patent met that same fate.
This decision reinforces the importance of claims’ reciting specific ways to achieve recited results. With today’s § 101 landscape, what matters most often is not what the invention does, but how it actually does it.
