NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

INTELLECTUAL VENTURES I LLC, 

INTELLECTUAL VENTURES II LLC,

Plaintiffs-Appellants

v.

ERIE INDEMNITY COMPANY, ERIE INSURANCE 

EXCHANGE, ERIE INSURANCE PROPERTY & 

CASUALTY COMPANY, ERIE INSURANCE 

COMPANY, FLAGSHIP CITY INSURANCE 

COMPANY, ERIE FAMILY LIFE INSURANCE 

COMPANY,

Defendants-Appellees

______________________ 

2017-1147

______________________ 

Appeal from the United States District Court for the 

Western District of Pennsylvania in No. 1:14-cv-00220-

MRH, Judge Mark R. Hornak.

______________________ 

Decided: November 3, 2017

______________________ 

 CHRISTIAN JOHN HURT, Nix Patterson & Roach LLP, 

Dallas, TX, argued for plaintiffs-appellants. Also represented by DEREK TOD GILLILAND, Daingerfield, TX.
2 INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 

 GREGORY H. LANTIER, Wilmer Cutler Pickering Hale 

and Dorr LLP, Washington DC, argued for defendantsappellees. Also represented by CLAIRE HYUNGYO CHUNG,

KEITH THOMAS HOWELL; MONICA GREWAL, Boston, MA.

______________________ 

Before PROST, Chief Judge, REYNA and WALLACH, Circuit Judges.

WALLACH, Circuit Judge. 

Appellants Intellectual Ventures I LLC and Intellectual Ventures II LLC (together, “IV”) sued Appellees Erie 

Indemnity Company et al. (collectively, “Erie”) in the U.S. 

District Court for the Western District of Pennsylvania 

(“District Court”), alleging infringement of U.S. Patent

No. 7,757,298 (“the ’298 patent”). Erie responded by filing 

a motion to dismiss for failure to state a claim under 

Federal Rule of Civil Procedure 12(b)(6), asserting that all 

claims of the ’298 patent are patent ineligible under 35 

U.S.C. § 101 (2012).1 The District Court granted Erie’s 

Motion to Dismiss. See Intellectual Ventures I LLC v. Erie 

Indem. Co., 200 F. Supp. 3d 565, 577 (W.D. Pa. 2016). 

IV appeals. We have jurisdiction pursuant to 28 

U.S.C. § 1295(a)(1) (2012). We affirm.

DISCUSSION

I. Standards of Review

We review a district court’s dismissal under Rule 

12(b)(6) according to the law of the regional circuit, Content Extraction & Transmission LLC v. Wells Fargo Bank, 

Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. Cir. 2014), here, the 

Third Circuit. The Third Circuit reviews de novo a dis-

 

1 Congress did not amend § 101 when it passed the 

Leahy-Smith America Invents Act. See generally Pub. L. 

No. 112-29, 125 Stat. 284 (2011).
INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 3

trict court’s grant of a motion to dismiss under Rule 

12(b)(6). Sands v. McCormick, 502 F.3d 263, 267 (3d Cir. 

2007). 

We review issues “unique to patent law,” including 

patent eligibility under § 101, consistent with our circuit’s 

precedent. Madey v. Duke Univ., 307 F.3d 1351, 1358 

(Fed. Cir. 2002) (citation omitted); see Accenture Glob. 

Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 

1340–41 (Fed. Cir. 2013) (reviewing a § 101 question 

under Federal Circuit precedent). A district court’s 

determination of patent eligibility under § 101 is an issue 

of law that we review de novo. See Intellectual Ventures I 

LLC v. Erie Indem. Co., 850 F.3d 1315, 1325 (Fed. Cir. 

2017).

II. The Claims of the ’298 Patent Are Patent Ineligible 

Under 35 U.S.C. § 101

“Whoever invents or discovers any new and useful 

process, machine, manufacture, or composition of matter, 

or any new and useful improvement thereof, may obtain a 

patent therefor, subject to the conditions and requirements of” Title 35 of the United States Code. 35 U.S.C. 

§ 101. “The Supreme Court, however, has long interpreted § 101 and its statutory predecessors to contain an 

implicit exception: laws of nature, natural phenomena, 

and abstract ideas are not patentable.” Content Extraction, 776 F.3d at 1346 (internal quotation marks and 

citation omitted).

The Supreme Court’s decision in Alice Corp. Pty. Ltd. 

v. CLS Bank International provides the framework 

through which we assess patent eligibility under § 101. 

See 134 S. Ct. 2347, 2354–55 (2014). A patent

claim falls outside § 101 where (1) it is “directed 

to” a patent-ineligible concept, i.e., a law of nature, natural phenomenon, or abstract idea, and 

(2), if so, the particular elements of the claim, con-
4 INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 

sidered “both individually and ‘as an ordered combination,’” do not add enough to “‘transform the 

nature of the claim’ into a patent-eligible application.”

Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 

(Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2355). We 

analyze the claims against this framework. 

A. The ’298 Patent

Entitled “Method and Apparatus for Identifying and 

Characterizing Errant Electronic Files,” the ’298 patent 

purports to improve upon the prior art by providing a 

method and apparatus to detect “undesirable files” “stored 

on computer storage devices” “according to pre-set criteria.” ’298 patent col. 1 ll. 59−60, col. 2 ll. 40, 41−42. 

Specifically, the ’298 patent teaches a method and apparatus whereby files “can be selected for review and characterized as acceptable or unacceptable,” id. col. 1 ll. 56–

57, which helps combat “great legal risks to [a] corporation,” id. col. 1 l. 56, from “the presence of certain files 

(such as depictions of child pornography or copyrighted 

music files),” id. col. 1 ll. 53−55; see id. col. 2 ll. 48−57, col. 

3 ll. 28−35 (similar); see also Intellectual Ventures, 200 F. 

Supp. 3d at 569 (characterizing the ’298 patent as one 

that “recognizes various characteristics of files . . . that 

give away illegal, illicit, or offensive content . . . and in so 

doing, saves Web hosting services from criminal, copyright, or some other liability”). The files, once recognized 

as errant files using the ’298 patent’s “file identification 

application,” will be marked for deletion from the hosting 

server. ’298 patent, Abstract.

The District Court treated independent claim 1 as 

representative of the ’298 patent, Intellectual Ventures, 

200 F. Supp. 3d at 568, “and so may we,” Elec. Power, 830 

F.3d at 1352. Claim 1 recites: 
INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 5

A computer-implemented method for identifying 

and characterizing stored electronic files, said 

method comprising:

under control of one or more configured 

computer systems: 

selecting a file from a plurality of files 

stored in a computer storage medium, 

wherein selecting the file is performed according to at least one of:

selecting the file based on the size 

of the file by determining whether 

an aggregate size of plural identically-sized files exceeds a predetermined threshold; 

selecting the file based on whether 

content of the file matches a file 

type indicated by a name of the 

file; or

selecting the file based on whether 

the file comprises data beyond an 

end of data marker for the file;

generating an identification value associated with the selected file, wherein the 

identification value is representative of at 

least a portion of the content of the selected file;

comparing the generated identification 

value to one or more identification values 

associated with one or more of a plurality 

of unauthorized files; and

characterizing the file as an unauthorized 

file if the identification value matches one 

of the plurality of identification values associated with the unauthorized files.
6 INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 

’298 patent col. 12 ll. 21−44 (emphases added). Relevant 

here, claim 1 discloses three selection criteria, any one of 

which may be used to identify errant files, with selection 

based on: (1) size, i.e., “whether an aggregate size of 

plural identically-sized files exceeds a predetermined 

threshold,” id. col. 12 ll. 29−30; (2) content, i.e., “whether 

content . . . matches a [certain] file type,” id. col. 12 ll. 

31−32; and (3) naming convention, i.e., “whether the file 

comprises data beyond an end of data marker,” id. col. 12 

ll. 33−34.

B. The Claims of the ’298 Patent Are Directed to an 

Abstract Idea

The District Court held that the ’298 patent “merely 

claims a computerized solution to a longstanding problem 

that exists outside of computers: identifying and categorizing illicit files, the possession of which might subject an 

individual or organization to liability.” Intellectual Ventures, 200 F. Supp. 3d at 575. It analogized the patent to 

solving problems faced by a “librarian tasked with marking and removing books containing pornographic material 

from a library.” Id. IV contends that the District Court 

erred in holding that the claims of the ’298 patent are 

directed to an abstract idea. Appellants’ Br. 18−29. 

Specifically, IV argues that, because the ’298 patent’s

claims “improve[] upon how computer systems detect 

unauthorized files” by teaching a “specific way of identifying unauthorized files using specific selection criteria that 

humans did not use,” the patent’s claims are not directed 

to an abstract idea. Id. at 20, 29. We disagree with IV. 

“The Supreme Court and we have held that a wide variety of well-known and other activities constitute abstract ideas.” Intellectual Ventures I LLC v. Symantec 

Corp., 838 F.3d 1307, 1314 (Fed. Cir. 2016) (footnote 

omitted); see id. at 1314 n.5 (collecting cases). For example, in BASCOM Global Internet Services, Inc. v. AT&T 

Mobility LLC, we held that a claim reciting a “content 
INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 7

filtering system for filtering content retrieved from an 

Internet computer network[, e.g., to prevent users from 

accessing certain websites,] . . . is [directed to] an abstract 

idea.” 827 F.3d 1341, 1348 (Fed. Cir. 2016) (internal 

quotation marks and citation omitted). Additionally, in 

Content Extraction, we found the claims directed to an 

abstract idea where they claimed, inter alia, “collecting 

data” and “recognizing certain data within the collected 

data set.” 776 F.3d at 1347. In FairWarning IP, LLC v. 

Iatric Systems, Inc., we held that an automated system for 

“detecting fraud and/or misuse in a computer environment based on analyzing data” according to “one of several rules” was directed to an abstract idea. 839 F.3d 1089,

1093 (Fed Cir. 2016) (internal quotation marks and

citation omitted). Finally in CyberSource Corp. v. Retail 

Decisions, Inc., we found claims that could be “performed 

in the human mind[] or by a human using a pen and 

paper” were directed to patent-ineligible mental processes. 654 F.3d 1366, 1372 (Fed. Cir. 2011).

The claims of the ’298 patent teach a method for 

“identifying and characterizing” files based on one of three 

selection criteria. ’298 patent col. 12 ll. 21−22; see id.

col. 12 ll. 28–34 (listing selection criteria). Taken together, the claims are directed to the identification of unwanted files in a particular field (i.e., a computer network) and 

otherwise concern data collection related to such identification, such that they are directed to an abstract idea 

under our precedent. See Elec. Power, 830 F.3d at 1353–

54 (explaining that collection and analysis of information 

is directed to an abstract idea); accord Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 

1340 (Fed. Cir. 2017) (discussing abstract idea precedent 

related to the collection, recognition, manipulation, and 

storage of data); Symantec, 838 F.3d at 1314 (characterizing materials “based on a known list of identifiers” is an

abstract idea). 
8 INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 

The specification lends further support to our conclusion that the claims of the ’298 patent teach an abstract 

idea. The specification repeatedly notes that selection of 

errant files generally could be performed by humans, see, 

e.g., ’298 patent col. 1 ll. 56−58 (stating that, in related 

art, “[s]uch files can be selected for review and characterized as acceptable or unacceptable . . . using an automated or manual process”), col. 2 ll. 43−44 (identifying a goal 

of the present invention to “reduce[] the amount of manual review necessary”), col. 8 ll. 11−12 (acknowledging, in 

conjunction with use of the claimed invention, “it 

may . . . be advisable to manually review the file[s]”), col. 

8 ll. 40−41 (similar), as IV itself acknowledges, see Appellants’ Br. 29 (“It is true that computer administrators

could manually review computer files and attempt to 

identify them as unauthorized.”). Indeed, the specification explicitly notes that humans are capable of performing the first two selection criteria. See ’298 patent col. 2 

ll. 20−26 (describing manual review based on “a simple 

search for oversized files” and “identifi[cation] by name or 

size alone” and the relative shortcomings of such humanbased review). 

The parties dispute whether the third criteria, noting 

information beyond an end of data file marker, has a 

manual analog. See Appellants’ Br. 26; compare Oral Arg. 

at 4:38−52, http://oralarguments.cafc.uscourts.gov/default.

aspx?fl=2017-1147.mp3 (IV: “Past the end of the data file 

marker, there could be unauthorized file data associated 

with something beside the [file] . . . . That doesn’t show 

up in that manual review.”), with id. at 25:53−26:11 

(Erie: “I don’t think there’s any argument that, even with 

respect to the end of data marker, humans couldn’t do 

that, there’s clearly . . . a non-digital analog to it.”). We 

have found the idea of performing a search to ferret out 

sources with unwanted material “based on characteristics” of the source to be directed to an abstract idea, see 

Symantec, 838 F.3d at 1314 (footnote omitted), and the 
INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 9

idea of “recognizing certain data” within a set, without 

regard to the individual criteria, to be abstract, see Content Extraction, 776 F.3d at 1347. As such, the third 

criteria and the claims, considering “their character as a 

whole,” are directed to a patent-ineligible abstract idea. 

Elec. Power, 830 F.3d at 1353 (internal quotation marks 

and citation omitted). 

IV attempts to analogize the claims of the ’298 patent 

to those involved in McRO, Inc. v. Bandai Namco Games 

America Inc., 837 F.3d 1299 (Fed. Cir. 2016) and Enfish, 

LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016),

wherein we found claims of software patents were not 

directed to abstract ideas under Alice step one. See Appellants’ Br. 20. In McRO, we held that, although the processes were previously performed by humans, “the 

traditional process and newly claimed method . . . produced . . . results in fundamentally different 

ways.” FairWarning, 839 F.3d at 1094 (differentiating

the claims at issue from those in McRO). In McRO, “it 

was the incorporation of the claimed rules, not the use of 

the computer, that improved the existing technology 

process,” because the prior process performed by humans

“was driven by subjective determinations rather than 

specific, limited mathematical rules.” 837 F.3d at 1314

(internal quotation marks, citation, and alterations omitted). In contrast, the claims of the ’298 patent merely 

implement an old practice in a new environment. See ’298 

patent col. 12 ll. 25−44 (describing the process of “selecting a file,” “generating an identification value,” “comparing” it to “a plurality of unauthorized files,” and 

“characterizing the file as an unauthorized file if the 

identification value matches” one of the plurality of previously-identified unauthorized files). IV has not argued 

that the claimed processes of selecting errant files apply 

rules of selection in a manner different from those which 

humans used, albeit with less efficiency, before the invention was claimed. 
10 INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 

The ’298 patent’s claims also differ from those found 

patent eligible in Enfish, where the claims were “specifically directed to a self-referential table for a computer 

database.” 822 F.3d at 1337. The claims thus were 

“directed to a specific improvement to the way computers 

operate” rather than an abstract idea implemented on a 

computer. Id. at 1336. Here, by contrast, the ’298 patent’s claims are not directed to an improvement in the 

way computers operate. Though the claims purport to 

accelerate the process of finding errant files and to reduce 

error, we have held that speed and accuracy increases 

stemming from the ordinary capabilities of a generalpurpose computer “do[] not materially alter the patent 

eligibility of the claimed subject matter.” Bancorp Servs., 

L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 

1266, 1278 (Fed. Cir. 2012). Instead, the claims of the 

’298 patent are more analogous to those in FairWarning, 

wherein we found claims reciting “a few possible rules to 

analyze audit log data” directed to an abstract idea because they asked “the same questions (though perhaps 

phrased with different words) that humans in analogous 

situations detecting fraud have asked for decades.” 839 

F.3d at 1094, 1095.

IV’s counterarguments are unpersuasive. First, IV 

states that the U.S. Patent and Trademark Office’s 

(“USPTO”) Subject Matter Eligibility Guidelines (“Eligibility Guidelines”) advise that the ’298 patent’s claims are 

not directed to an abstract idea because they are analogous to exemplary patent-eligible claims that are “directed towards physically isolating . . . and extracting 

malicious code . . . to create a sanitized communication in 

a new data file.” Appellants’ Br. 22 (quoting J.A. 180); see 

id. at 21−23; J.A. 178−80. However, as IV concedes, the 

Eligibility Guidelines are “not binding authority” on this 

court. Appellants’ Br. 22 n.3; see 2014 Interim Guidance 

on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618, 

74,619 (Dec. 16, 2014) (noting the Guidelines and accom-
INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 11

panying explanatory example sets “do[] not have the force 

and effect of law”). Moreover, there is a distinct difference 

between software designed to root out malware, a concept 

the USPTO notes is “inextricably tied to computer technology,” J.A. 180, and software designed to automate 

processes of file categorization and extraction like the 

claims of the ’298 patent. The latter merely applies a 

well-known idea using generic computers “to the particular technological environment of the Internet.” DDR 

Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259

(Fed. Cir. 2014). 

Second, IV repeatedly cites to the source code attached to the patent application for the file identification 

application limitation recited in claim 10 as evidence of 

patent eligibility, see, e.g., Appellants’ Br. 21, 25, 27; and 

the dependent claims’ limitations of generating a “checksum,” see, e.g., id. at 22, 28 (discussing the checksum 

identification values of dependent claims); see also ’298 

patent col. 12 l. 51 (claim 3) (“The computer-implemented 

method of claim 1, wherein generating an identification 

value comprises generating a checksum.”), col. 12 ll. 

54−55 (claim 4) (similar, describing multiple checksums 

associated with different portions of stored files). However, IV has not challenged the designation of claim 1 as 

representative, so all claims of the ’298 patent fall with 

representative claim 1, which fails the Alice step one 

analysis. See Elec. Power, 830 F.3d at 1352 (holding that 

all claims were patent ineligible where the appellant 

“neither argues for the validity of any other claim . . . nor 

presents any meaningful argument for the distinctive 

significance of any claims other than those included in 

[the representative] claim”).2 In sum, we find the claims 

 

2 Even if we consider the dependent claims’ limitations and independent claim 10, our holding would not 

change. For claim 10, “the complexity of the implement-
12 INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 

of the ’298 patent directed toward an abstract idea under 

Alice step one. 

C. The Claims of the ’298 Patent Do Not Recite an Inventive Concept

The second step of the Alice test requires us to determine whether the subject patent’s claims—when viewed 

individually and as an ordered combination—contain “an 

inventive concept sufficient to transform the claimed 

abstract idea into a patent-eligible application.” 134 S. 

Ct. at 2357 (internal quotation marks omitted). A claim 

contains an inventive concept if it “include[s] additional 

features” that are more than “well-understood, routine, 

conventional activities.” Id. at 2357, 2359 (internal 

quotation marks, brackets, and citations omitted).

The District Court held that the claims of the ’298 patent lack an inventive concept because they recite “generic 

functions, even if performed by a computer,” that are not 

inventive because “[s]electing files based on identifiers 

 

ing software . . . does not transform a claim reciting only 

an abstract concept into a patent-eligible system or method.” Accenture, 728 F.3d at 1345. IV acknowledges that it 

has not claimed the source code, see Appellants’ Br. 7 

(stating “the inventor provided the application’s source 

code” and “attached [it] as an exhibit” to the patent application (citations omitted)), and our § 101 analysis “focus[es] . . . on whether the claims of the asserted patents 

fall within the excluded category of abstract ideas,” 

Content Extraction, 776 F.3d at 1346 (emphasis added). 

For the dependent claims’ identification of files based on 

checksums, we have stated that “[t]he dependent claims’ 

narrowing [of long familiar practices] to particular types 

of . . . relationships . . . does not change the [Alice step 

one] analysis.” buySAFE, Inc. v. Google, Inc., 765 F.3d 

1350, 1355 (Fed. Cir. 2014). 
INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 13

and matching different files/identifiers is just what computers do.” Intellectual Ventures, 200 F. Supp. 3d at 576. 

The District Court further held that the USPTO’s allowance of the claims under the pre-Alice “machine-ortransformation test, by itself, i[s] not sufficient to render a 

claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible 

claim with an inventive concept.” Id. at 577 (quoting 

DDR Holdings, 773 F.3d at 1256). IV argues that the 

District Court erred in its analysis under Alice step two

because the claims of the ’298 patent “recite novel file 

identification software that analyzes and identifies files in 

unconventional ways—applying three specific selection 

criteria and then performing a digital-signature-based 

lookup process.” Appellants’ Br. 30.3 We disagree with 

IV. 

 

3 IV additionally alleges that the District Court improperly shifted the burden of proving an inventive concept to IV, failing to follow 35 U.S.C. § 282’s mandate that 

“[t]he burden of establishing invalidity of a patent . . . shall rest on the party asserting such invalidity.” 

Appellants’ Br. 36 (quoting 35 U.S.C. § 282). The record 

contains no support for this argument. The court below 

referenced an earlier decision on related patents in which 

it “examined the state of § 101 jurisprudence,” Intellectual 

Ventures, 200 F. Supp. 3d at 570, and expressly stated 

there that “[Erie] ha[s] the burden of demonstrating the[ 

patents] are not directed to patent-eligible subject matter,” Intellectual Ventures I LLC v. Erie Indem. Co., 134 F. 

Supp. 3d 877, 896 n.37 (W.D. Pa. 2015), vacated in part on 

other grounds, 850 F.3d 1315 (Fed. Cir. 2017). The District Court then reviewed Erie’s submissions and explained why it found IV’s rebuttal evidence insufficient to 

overcome Erie’s showing of patent ineligibility. See 

Intellectual Ventures, 200 F. Supp. 3d at 576−77. “Con-
14 INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 

The claims of the ’298 patent fail to provide an inventive concept. The ’298 patent teaches a method that is 

repeatedly and explicitly referred to as “computerimplemented.” See, e.g., ’298 patent col. 12 ll. 21, 45, 49, 

52, 56, 63, 65, col. 13 ll. 1, 4. It further teaches a “computer system” comprised of “a server” and a “file identification application,” id. col. 13 l. 7, 8, 11, but it never 

suggests that any of these computer components are nongeneric, see generally id. When claims like those in the 

’298 patent are “directed to an abstract idea” and “merely 

requir[e] generic computer implementation,” they “do[] 

not move into [§] 101 eligibility territory.” buySAFE, 765 

F.3d at 1354 (internal quotation marks and citation 

omitted); see Intellectual Ventures I LLC v. Capital One 

Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)

(“[C]laiming the improved speed or efficiency inherent 

with applying the abstract idea on a computer” does not

“provide a sufficient inventive concept.”). 

IV’s counterarguments are unpersuasive. First, IV 

looks to the prosecution history of the ’298 patent, arguing 

that the three selection steps are not conventional because they were “added . . . during prosecution to obtain 

allowance of the claims.” Appellants’ Br. 34. However, 

“[w]hile the claims may not have been anticipated or 

obvious because the prior art did not disclose [the selection criteria], that does not suggest that the idea of [‘selecting’ errant files] is not abstract.” Symantec, 838 F.3d 

at 1315; see Diamond v. Diehr, 450 U.S. 175, 188−89 

(1981) (“The ‘novelty’ of any element or steps in a process, 

or even of the process itself, is of no relevance in deter-

 

trary to [IV]’s assertions, explaining why a party’s arguments are not persuasive does not constitute improper 

burden shifting.” Ignite USA, LLC v. CamelBak Prods., 

LLC, No. 2016-2747, 2017 WL 4548459, at *5 (Fed. Cir. 

Oct. 12, 2017).
INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 15

mining whether the subject matter of a claim falls within 

the § 101 categories of possible patentable subject matter.” (footnote omitted)). 

Second, IV contends that the USPTO’s allowance of 

the claims under the machine-or-transformation test 

“strongly suggests that the ’298 patent claims patenteligible subject matter.” Appellants’ Br. 37 (capitalization 

omitted). While the machine-or-transformation test “can 

provide a useful clue in the second step of the Alice

framework,” it “is not the sole test governing § 101 analyses.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 

(Fed. Cir. 2014) (internal quotation marks and citations 

omitted); see Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App’x 914, 919 (Fed. Cir. 

2015) (“[P]ost-[]Alice, [the machine-or-transformation

test] is no longer sufficient to render a claim patenteligible.” (citation omitted)). Under that test, “[a] claimed 

process can be patent-eligible under § 101 if,” inter alia, 

“it is tied to a particular machine or apparatus.” Ultramercial, 772 F.3d at 716 (internal quotation marks and 

citation omitted). In other words, the subject patent must 

disclose the use of an apparatus specific to the claimed 

invention. See id. The claims of the ’298 patent, by 

contrast, disclose the use of general computer components. See ’298 patent col. 12 l. 24 (claiming use of “configured computer systems”), col. 12 ll. 25−26 (claiming use 

of “a computer storage medium”), col. 13 l. 8 (disclosing “a 

server” and “a memory”), col. 13 l. 12 (disclosing a “file 

identification application” operative on the server). We 

find the claims do not recite an inventive concept under 

Alice step two.4

 

4 IV’s additional arguments fail. First, IV contends 

that the claims satisfy Alice step two because “[t]hey do 

not preempt all―or even most―ways to identify potentially unauthorized files.” Appellants’ Br. 32. We have 
16 INTELLECTUAL VENTURES I LLC v. ERIE INDEM. CO. 

CONCLUSION

We have considered IV’s remaining arguments and 

find them unpersuasive. For these reasons, the Final 

Judgment of the U.S. District Court for the Western 

District of Pennsylvania is

AFFIRMED

 

previously considered preemption in both steps one and 

two of the Alice test. Compare OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362−63 (Fed. Cir. 2015)

(reviewing under step one), with BASCOM, 827 F.3d at 

1350 (reviewing under step two). Regardless of which 

step the argument is made under, when a patent’s claims 

“disclose patent[-]ineligible subject matter . . . , preemption concerns are fully addressed and made moot.” Ariosa 

Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 

(Fed. Cir. 2015); see OIP Techs., 788 F.3d at 1362−63 

(“[T]hat the claims do not preempt all [inventions in the 

field] or may be limited to [certain processes in the field]

do[es] not make them any less abstract.”). Second, IV 

alleges that the District Court improperly granted Erie’s 

Motion to Dismiss under Rule 12(b)(6) because it decided 

the § 101 issue “without considering a complete record.” 

Appellants’ Br. 41 (capitalization omitted); see id. at 

41−43. “We have repeatedly recognized that in many 

cases it is possible and proper to determine patent eligibility under . . . § 101 on a Rule 12(b)(6) motion.” Genetic 

Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1373 (Fed. 

Cir. 2016); see id. at 1373−74 (collecting cases).