NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

TRANXITION, INC., A DELAWARE 

CORPORATION,

Plaintiff-Appellant

v.

LENOVO (UNITED STATES) INC., A DELAWARE 

CORPORATION, MICRO FOCUS SOFTWARE, INC., 

A DELAWARE CORPORATION,

Defendants-Appellees

______________________ 

2015-1907, 2015-1941, 2015-1958

______________________ 

Appeals from the United States District Court for the 

District of Oregon in Nos. 3:12-cv-01065-HZ, 3:12-cv01404-HZ, Judge Marco A. Hernandez.

______________________ 

Decided: November 16, 2016

______________________ 

ARTHUR STEVEN BEEMAN, Arent Fox LLP, San Francisco, CA, argued for plaintiff-appellant. Also represented 

by JOEL MUCHMORE; DAYNA JEAN CHRISTIAN, Immix Law 

Group PC, Portland, OR. 

TODD ERIC LANDIS, Vinson & Elkins LLP, Dallas, TX,

argued for all defendants-appellees. Lenovo (United 
2 TRANXITION, INC. v. LENOVO (UNITED STATES) INC. 

States) Inc. also represented by ERIC JOSEPH KLEIN; FRED 

WILLIAMS, Austin, TX. 

STERLING A. BRENNAN, Maschoff Brennan Laycock 

Gilmore Israelsen & Wright, Irvine, CA, for defendantappellee Micro Focus Software, Inc. Also represented by 

LANNIE REX SEARS, Salt Lake City, UT.

______________________ 

Before PROST, Chief Judge, REYNA and CHEN, Circuit 

Judges.

PROST, Chief Judge. 

Tranxition, Inc. (“Tranxition”) appeals from a final 

decision of the United States Court for the District of 

Oregon finding that all claims of U.S. Patent No. 

6,728,877 (“’877 patent”) and U.S. Patent No. 7,346,766 

(“’766 patent”) are invalid because they are directed to 

ineligible subject matter under 35 U.S.C. § 101. For the 

reasons discussed below, we affirm.

BACKGROUND

The ’877 patent and the ’766 patent, which is a continuation from the ’877 patent, concern computer system 

upgrades. Typically, a person’s computer system contains 

many individualized settings, such as email addresses, 

desktop settings, and stored passwords. ’877 patent col. 1 

ll. 36–47. When a computer is replaced, those settings do 

not appear on the new computer by default. See id. at 

cols. 48–50. In order for a replacement computer to 

behave like its predecessor, consumers must manually 

“migrate” the settings on the old computer to the new 

computer, which is a time-consuming process, resulting in 

user frustration and lost productivity. Id. at col. 2 ll. 6–

38. The ’877 patent and the ’766 patent propose to solve 

these problems by “automatic[ally] transitioning” these 

settings between computers. Id. at col. 1 ll. 19–21. This 

would provide an advantage over the prior art because 
TRANXITION, INC. v. LENOVO (UNITED STATES) INC. 3

“[i]t is . . . desirable to provide an automatic migration of 

configuration settings from an old computing system to a 

new computing system without using a time consuming 

manual migration process.” Id. at col. 2 ll. 41–44. 

On June 15, 2012, Tranxition filed a complaint 

against Lenovo (United States) Inc. (“Lenovo”), asserting 

claims of both the ’877 patent and the ’766 patent. Shortly thereafter, Tranxition also asserted the patents against 

Novell, Inc. now known as Micro Focus Software, Inc. 

(“Micro Focus”) in a separate action. Lenovo subsequently 

moved for summary judgment under Rule 56(a) of the 

Federal Rules of Civil Procedure arguing that all the 

patented claims were invalid because they were targeted 

to patent-ineligible subject matter under 35 U.S.C. § 101. 

The district court agreed with Lenovo. First, it determined that the claims are directed to the abstract idea 

of “migrating” a user’s configuration settings from one 

computer to another computer. J.A. 11. The district court 

then found that none of the claims contain an inventive 

concept sufficient to render the claims patent-eligible. 

Consequently, the district court granted Lenovo’s motion 

for summary judgment and entered judgment in its favor. 

After the summary judgment order became final, Micro Focus moved for judgment on the pleadings based on 

the summary judgment order. Finding that the order had 

preclusive effect over Tranxition, the court granted Micro 

Focus’s motion and entered judgment in its favor. 

Tranxition now appeals both orders. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

I 

We review the grant of summary judgment under the 

same standard as the regional circuit, here the Ninth 

Circuit. See Taurus IP, LLC v. DaimlerChrysler Corp., 
4 TRANXITION, INC. v. LENOVO (UNITED STATES) INC. 

726 F.3d 1306, 1322 (Fed. Cir. 2013). The Ninth Circuit 

reviews a grant of summary judgment de novo. Universal 

Health Servs., Inc. v. Thompson, 363 F.3d 1013, 1019 (9th 

Cir. 2004). Whether claims are directed to patent-eligible 

subject matter is a question of law, which we also review 

de novo. Intellectual Ventures I LLC v. Symantec Corp., 

No. 2015-1769, 2016 WL 5539870, at *2 (Fed. Cir. Sept. 

30, 2016). 

Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and useful process, machine, or composition 

of matter, or any new and useful improvement thereof, 

may obtain a patent therefor, subject to the conditions 

and requirements of this title.” However, § 101 contains 

an implicit exception—“[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Ass’n for 

Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 

2107, 2116 (2013) (internal quotation marks and citation 

omitted).

To determine whether a claim is patent-eligible, the 

Supreme Court has laid out a two-step framework. “First, 

we determine whether the claims at issue are directed to 

one of those patent-ineligible concepts.” Alice Corp. Pty. 

Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014); see 

McRO, Inc. v. Bandai Namco Games Am. Inc., No. 2015-

1080, 2016 WL 4896481, at *6 (Fed. Cir. Sept. 13, 2016). 

Second, if the claims are directed to patent-ineligible 

subject matter, we must determine if they contain an 

“inventive concept” “sufficient to ensure that the patent in

practice amounts to significantly more than a patent upon 

the ineligible concept itself.” Alice, 134 S. Ct. at 2355

(internal quotation marks, citation, and alterations omitted).

II

We consider claim 1 of the ’877 patent representative 

of all claims for purposes of our analysis.
TRANXITION, INC. v. LENOVO (UNITED STATES) INC. 5

Claim 1 of the ’877 patent reads:

1. A method in a computer system for preparing 

configuration settings for transfer from a source 

computing system to a target computing system, 

the method comprising:

providing configuration information about configuration settings on the source computing system, the configuration information including a 

name and location of each configuration setting;

generating an extraction plan that identifies configuration settings to be extracted from the 

source computing system, the generating including providing a list of configuration settings known to the source computing system 

and including identifying active configuration 

settings out of the provided list of configuration 

settings to be extracted from the source computing system;

extracting the active configuration settings of the 

extraction plan from the source computing system, the extracted configuration settings being 

located using the provided configuration information;

generating a transition plan that identifies configuration settings to be transferred from the 

source computing system to the target computing system, the generating including providing 

active configuration settings of the extraction 

plan and including identifying from the active 

configuration settings of the extraction plan active configuration settings to be transferred 

from the source computing system to the target 

computing; and
6 TRANXITION, INC. v. LENOVO (UNITED STATES) INC. 

for each active configuration setting of the transition plan,

retrieving the extracted configuration settings 

identified as active configuration settings of 

the transition plan; and

transitioning one or more of the retrieved configuration settings from a format used on the 

source computing system to a format used on 

the target computing system.

’877 patent col. 17 ll. 28–62.

Under step one of Alice, we must first determine 

whether a claim is directed to a patent-ineligible concept. 

In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 

(Fed. Cir. 2016). For claims solely implemented on a 

computer, we have previously found it “relevant to ask 

whether the claims are directed to an improvement to 

computer functionality versus being directed to an abstract idea.” Enfish LLC v. Microsoft Corp., 822 F.3d

1327, 1335 (Fed. Cir. 2016). 

Here, it is undisputed that manual migration is an 

abstract idea. However, Tranxition argues that the 

district court erred when it determined that the claim is 

directed to the abstract idea of “migration” of computer 

settings. According to Tranxition, the claim is directed to 

“transitioning” settings from one computer to another, 

which is a specific software-based solution to a computerbased problem and “exceeds the abstract concept of migration.” Appellant’s Br. 36–37.

This argument is unconvincing. According to the 

specification, the patent is directed to solving problems 

arising out “migration,” which was performed manually. 

’877 patent col. 2 ll. 6–38. To solve these problems, the 

patent proposes “automatic transitioning of configuration 

settings” as a solution, and explains “[i]t is . . . desirable 

to provide an automatic migration of configuration set-
TRANXITION, INC. v. LENOVO (UNITED STATES) INC. 7

tings from an old computing system to a new computing 

system.” Id. at col. 1 ll. 19–20, col. 2 ll. 41–43 (emphasis 

added). Put another way, the stated aim of the patent is 

to automate the migration of data between two computers. This is not sufficient under step one of Alice. Contrary to Tranxition’s argument, the claim is not directed to 

an improvement to computer functionality. There is 

nothing in the claim to suggest that, once settings have 

been transitioned, the target computer will be any more 

efficient. Cf. Enfish, 822 F.3d at 1338. The claim merely 

“transitions” data from one computer to another and thus 

automate the migration process. Digitech Image Techs., 

LLC v. Elecs. For Imaging, Inc., 258 F.3d 1344, 1351 (Fed. 

Cir. 2014). Therefore, the claim is directed to the abstract 

idea of migration, or transitioning, of settings.

Having determined that the claim is directed to an 

abstract idea, we must next determine whether it contains “an inventive concept sufficient to transform the 

claimed abstract idea into a patent-eligible application.” 

Alice, 134 S. Ct. at 2357. We hold that it does not.

Tranxition argues that the claims contain an inventive concept because a manual process would not 

necessarily capture all the configuration settings in a 

computer and that there is no record evidence showing 

that the automated transition process operates in the 

same way as a manual process. These arguments miss 

the mark. Though a computer could potentially have 

dozens, if not hundreds of settings across numerous 

applications, the claim language only requires one or 

more configuration settings. It does not provide a maximum number of settings. Further, it is not relevant that 

a human may perform a task differently from a computer. 

It is necessarily true that a human might apply an abstract idea in a different manner from a computer. What 

matters is the application. “Stating an abstract idea 

while adding the words ‘apply it with a computer’” will 
8 TRANXITION, INC. v. LENOVO (UNITED STATES) INC. 

not render an abstract idea non-abstract. See id. at 2359. 

There must be more. 

Here, the claim instructs a practitioner to (1) provide 

configuration information, (2) generate an extraction 

plan, (3) extract the configuration settings, (4) generate a 

transition plan, and (5) transition those settings to a new 

computer. These steps, both individually, and as an 

ordered combination, do not disclose an inventive concept. 

They merely describe a generic computer implementation, 

using “routine, conventional activities,” of the abstract 

idea, “which is insufficient to transform the patentineligible abstract idea into patent-eligible subject matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 

(Fed. Cir. 2014).

Because they are directed to an abstract idea, and 

there is no inventive concept present, the claims of the 

’877 patent and the ’766 patent are drawn to patentineligible subject matter and are therefore invalid under 

35 U.S.C. § 101.1

 

1 Tranxition also argues that the district court 

erred in holding that the presumption of validity does not 

apply to challenges brought under 35 U.S.C. § 101 and 

failed to apply the clear and convincing evidentiary 

standard. In holding that the presumption of validity 

does not apply to challenges under § 101, the district 

court relied on a concurring opinion. See J.A. 8 (citing 

Ultramercial, 772 F.3d at 720 (Mayer, J., concurring). We 

are not persuaded that the district court was correct that 

a presumption of validity does not apply. We also do not 

address the proper evidentiary standard in this case as

there do not appear to be any material facts in dispute. 

Moreover, under any applicable evidentiary standard, and 

regardless of the appropriate burden, the district court 
TRANXITION, INC. v. LENOVO (UNITED STATES) INC. 9

CONCLUSION

For the foregoing reasons, we affirm the district 

court’s conclusion that all of the claims of the ’877 patent 

and the ’766 patent are directed to patent-ineligible 

subject matter and are therefore invalid under 35 U.S.C. 

§ 101.

AFFIRMED

 

did not err in holding that the claims are patent-ineligible 

under § 101.