by Dennis Crouch
Gabara v. Facebook, Inc. (Supreme Court 2022)
Thad Gabara is a former Bell Labs engineer and is a prolific inventor with 100+ patents in his name. Along the way, Gabara also became a patent agent and personally prosecuted many of his recent patents, including the Sliding Window patents asserted here. U.S. Patent Nos. 8,930,131; 8,620,545; 8,836,698; 8,706,400; and 9,299,348.
Gabara’s Sliding Window patents cover various aspects of a map display for a mobile device. The problem: device screens are small and a user can only see a portion of an actual map at any one time. Gabara’s solution is something he calls a “sliding window.” Basically, the system has a data structure for the whole map, but the screen just provides a small window. The view window then slides around as you move the phone about. Figures 10(a) and 10(b) compare the prior art with Gabara’s invention.
Gabara sued Facebook for patent infringement. Facebook responded with petitions for inter partes review (denied) and a motion to dismiss on eligibility (granted). Judge Cote (SDNY) dismissed the case for failure to state a claim upon which relief could be granted (12(b)(6)). The district court concluded the claims were directed to an unpatentable abstract idea of “Moving the device to change one’s view of the image instead of scrolling on the device to change the view.” On appeal, the Federal Circuit affirmed without opinion. Now, Gabara has petitioned to the U.S. Supreme Court for review. Although Gabara’s petition is unique, it also ties its hopes to the pending petition in American Axle. That case is awaiting the views of the Solicitor General.
The Sliding Windows patents cover a novel data structure—a “background image of a stationary map”—that allows users to navigate large images on a smartphone by moving the phone itself. This data structure is required by the patents’ claims, emphasized as the key to the invention throughout the patents’ specifications, and was the explicit basis on which the PTAB relied to distinguish the patents over prior art. In ruling that the patents were invalid under 35 U.S.C § 101 for claiming an abstract idea, however, the court below did not consider this claimed data structure, excluded this express requirement from the patent claims from the court’s characterization of what the claims were “directed to,” and refused to consider the fact that because this claim limitation distinguished prior art, the Sliding Windows patents did not risk preemption of any abstract idea.
The questions presented are:
What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C § 101?
Whether, and to what extent, a court may ignore the “claimed advance” that distinguishes a patented invention over the prior art in its determination of what a claim is directed to under step 1 of the Court’s two step framework for determining patent eligibility under 35 U.S.C. § 101?
Whether, and to what extent, a court may consider whether a patent claim provides sufficient disclosure regarding how the claimed invention may be made or used to determine whether a patent claim is eligible for patenting under 35 U.S.C. § 101, or whether that improperly conflates § 101 and § 112?
Whether preemption is a consideration that the lower courts must consider in determining whether a claimed invention is directed to patent-eligible subject matter under Section 101, or whether it can be properly ignored if not raised by the patent-challenger
Gabara v Facebook PetitionforWrit. Note here that Gabara initially pursued the case pro se. For the appeal and petition, he linked-up with Timothy Gilman’s team at Stroock.
Claim 1 of the ‘400 Patent:
1. A method of moving a portable unit to search for a new location comprising the steps of:
displaying an image on a screen of the portable unit matched and superimposed to a corresponding portion of a background image of a stationary map;
mapping a first point of the display image located in a center of the screen of the portable unit to a corresponding reference point in the background image of the stationary map;
moving the portable unit to display a new portion of the background image of the stationary map on the screen;
determining a first vector between the center of the screen of the portable unit and the new location; and
moving the center of the screen of the portable unit to the new location as determined by the first vector.