Tailoring Music to Your Tastes – Another Successful 101 Challenge in N.D. Cal.

Bluebonnet Internet Media Services, LLC (“Bluebonnet”) asserted three patents relating to generating media playlists against Pandora Media, LLC (“Pandora”). Judge Chhabria granted Pandora’s motion for judgment on the pleadings, holding that the asserted patents are invalid under 35 U.S.C. § 101.

The court first determined that the patents were directed to the abstract idea of customizing a product according to a customer’s likes and dislikes, noting that “[t]ailoring products to fit taste is a long-prevalent practice and one of the building blocks of human ingenuity that cannot itself be patented.” Even though the claims were limited to the context of a computer-based media playlist, they were ultimately directed to the application of this abstract idea in a particular existing technological environment with purely functional and generic computer components. For example, the claims recited a “playlist generator,” but this was just a “placeholder for whatever computer software or hardware performs that step.” The court rejected Bluebonnet’s argument that the claims were directed to technological problems of creating “automatic and dynamic playlists” or “generating personalized playlists at scale” because creating playlists based on user ratings is an abstract idea, and the only way the claims could be said to implement this idea “at scale” was by implementing it in a computer.

Next, the court concluded that there was no inventive concept to transform the claims into patentable subject matter. Although Bluebonnet had submitted an expert declaration that the claimed system was not well-understood, routine, or conventional, the court pointed out that the novelty of a claimed system is not proof of an inventive concept. According to the court, “[i]f there is no legally sufficient inventive concept, it is unnecessary to decide whether that concept was well-understood, routine, or conventional” because the “inventive concept” inquiry “does not make the first application of an abstract idea patentable.” To illustrate, the court explained that while a particular playlist generator might be patentable, simply claiming a generic “playlist generator” did not mandate a fact-intensive inquiry into what sorts of playlist generators were well-understood, routine, or conventional. The problem with Bluebonnet’s claims was that they only disclosed a generic playlist generator running on a computer and implementing an abstract idea.

The question of whether something is eligible under Section 101 can get into factual questions about what elements were well-understood, routine, or conventional. But as this decision reminds us, these factual disputes may not matter if what is allegedly unconventional is still abstract—even if it occurs in a computer. 

Finally, we note that this case was originally filed in the Western District of Texas, but Pandora successfully moved to transfer to the Northern District of California. The decision thus provides another example of the advantages of moving to transfer cases with potential Section 101 defenses to the Northern District.