MySpace, Inc. v. GraphOn Corp.

United States Court of Appeals
for the Federal Circuit
__________________________

MYSPACE, INC.,
Plaintiff-Appellee,
and
FOX AUDIENCE NETWORK, INC.,
Third Party Defendant-Appellee,
and
CRAIGSLIST, INC.,
Plaintiff-Appellee,
v.
GRAPHON CORPORATION,
Defendant/Third Party Plaintiff-Appellant.
__________________________

2011-1149
__________________________

Appeal from the United States District Court for the
Northern District of California in consolidated case nos.
10-CV-0604 and 10-CV-1156, Judge Elizabeth D. LaPorte.
__________________________

Decided: March 2, 2012
__________________________

KEVIN B. COLLINS, Covington & Burling, LLP, of
Washington, DC, argued for plaintiff-appellee, Myspace,
Inc. and third party defendant-appellee, Fox Audience
MYSPACE v. GRAPHON CORP 2

Network, Inc. With him on the brief was JEFFREY M.
DAVIDSON, of San Francisco, California.

CHRISTOPHER KAO, Perkins Coie, LLP, of Palo Alto,
California, argued for the plaintiff-appellee, Craiglist, Inc.
With him on the brief was J. PATRICK CORRIGAN.

MICHAEL D. ROUNDS, Watson Rounds, of Reno Ne-
vada, argued for defendant/third party plaintiff-appellant.
With him on the brief were CASSANDRA P. JOSEPH and
ADAM K. YOWELL.
__________________________

Before NEWMAN, MAYER, and PLAGER, Circuit Judges.
Dissenting opinion filed by Circuit Judge MAYER.
PLAGER, Circuit Judge.
This is a patent infringement case in which plaintiffs,
MySpace, Inc. and craigslist, Inc., filed declaratory judg-
ment suits in the Northern District of California against
defendant GraphOn Corporation (“GraphOn”). Plaintiffs
alleged that certain patents owned by GraphOn were
invalid and not infringed by them. GraphOn counter-
claimed for infringement, and asserted third-party claims
against Fox Audience Network, Inc. (“FOX”). Plaintiffs’
suits were consolidated. Shortly thereafter, FOX joined
MySpace in a summary judgment motion on the issue of
invalidity, and craigslist followed with its own summary
judgment motion that incorporated by reference the
MySpace/FOX motion. These three parties will hereafter
be referred to as “the MySpace parties.”
The District Court granted the MySpace parties’ mo-
tion for summary judgment, and rendered final judgment
for the MySpace parties. GraphOn timely appeals.
Because we believe the case is properly decided under
3 MYSPACE v. GRAPHON CORP

§§ 102 and 103 of the Patent Act and not under § 101, and
because the district court did not err in its grant of sum-
mary judgment of invalidity of the patents-in-suit under
those sections, we affirm.
BACKGROUND
1. Underlying Technology
For purposes of this opinion, we need only summarize
the history and development of the underlying patented
technology in this case, which relates to the ability to
create, modify, and store database records over a com-
puter network. For a full description, see the district
court’s opinion, MySpace, Inc. v. GraphOn Corp., 756 F.
Supp. 2d 1218 (N.D. Cal. 2010).
In the early 1980’s, desktop software applications ran
entirely on a single computer, so that the files, code, and
data relating to a given program were all stored on a
personal computer (“PC”). This configuration presented a
problem for larger-scale applications. Users could not
easily share documents, images, files, and other data
between computers.
The mid-1980’s to mid-1990’s brought about the de-
velopment of client-server applications. Id. at 1222.
Companies began placing their applications on a server so
that client machines could access files, documents, and
other data held in a centralized location. This configura-
tion allowed for easier sharing of information and enabled
users to reduce the amount of data stored in the memory
of their PCs. The data stored on the centralized servers
were generally stored in file systems. Id. File systems
are a method of organizing and storing data that are
typically configured hierarchically using a parent-child
MYSPACE v. GRAPHON CORP 4

type of relationship 1 similar to the folder and directory
configuration common in today’s PC operating systems.
While a marked improvement from the early single
desktop PC configuration, the file system-based client-
server configuration was not without its problems. Issues
such as functionality, performance, and data security
became troublesome for many applications. Spielman
Decl. at ¶ 36. Further, the file system method of data
storage was not easily searchable or writable. Id. at
¶¶ 41 and 69-70. Consequently, the notion of using a
relational database to store information on these servers
was born.
A relational database separates the stored data into
multiple relations or “tables” and connects them through
the use of identification (“ID”) fields. MySpace, Inc., 756
F. Supp. 2d at 1223. An ID field generally is a numeric
field that can be synchronized across multiple tables in
order to allow for faster searching, storing, and editing of
information. Because the data is compartmentalized into
tables, relational databases can be configured so that the
ID fields that map to sensitive textual fields, such as
security numbers and bank account information, can be
locked while less guarded data, such as a person’s name
and gender, are available upon query.
2. Patents-In-Suit and Procedural History
The four patents at issue, U.S. Patent Nos. 6,324,538
(“’538 Patent”), 6,850,940 (“’940 Patent”), 7,028,034 (“’034
Patent”), and 7,269,591 (“’591 Patent”), disclose a method
and apparatus that allow a user to create, modify, and

1 In the view of software designers, in a parent-
child relationship each parent may have multiple chil-
dren, but each child may only have one parent. Declara-
tion of Susan Spielman (“Spielman Decl.”) at ¶ 39.
5 MYSPACE v. GRAPHON CORP

search for a database record over a computer network. Id.
All four patents claim priority to a parent application,
filed on December 14, 1995, and subsequently issued as
U.S. Patent No. 5,778,367 (“’367 Patent”), that is not
being contested in this case. Id.
The inventors of the patents-in-suit were motivated to
find a way to better control the content of an Internet
listing. Id. Early search engine developers edited and
categorized each listing based on their own understanding
of the listing without input from the user. Id. This
occasionally created listings that were miscategorized or
that contained typographical errors—both of which were
difficult to search. The inventors attempted to solve these
problems by creating a system that enabled a user to
control the creation and classification of the user’s own
database entry over a computer network such as the
Internet. Id. Users could create a database entry with
their own text and graphics and then choose or create
searchable categories that best matched the information.
Id. The patents-in-suit claim various aspects of this
invention.
Before the earliest priority date of the patents-in-suit,
however, the Mother of all Bulletin Boards (“MBB”) was
developed by Dr. Oliver McBryan at the University of
Colorado. The MBB was first made available for public
use in November 1993, more than two years before the
priority application for the patents-at-issue was filed. Id.
at 1224. The MBB provided the ability to have online
Internet catalogues that could grow through user input
without the need for intervention by a webmaster or
administrator. Id. The MBB stored all its entries in the
file system of the computer running the MBB. The data
within the file system was stored hierarchically as op-
posed to relationally.
MYSPACE v. GRAPHON CORP 6

As earlier noted, not long after the MySpace and
craigslist cases were consolidated in May of 2010,
MySpace and FOX jointly filed a motion for summary
judgment on the issue of invalidity of all four patents-in-
suit. This motion was based on the MBB prior art sys-
tem. The motion sought summary judgment that all the
claims were invalid as anticipated or obvious. And as
noted, days later craigslist also filed a similar motion for
summary judgment. A hearing was held on October 1,
2010. Following the hearing, and pursuant to the court’s
instruction, each party filed supplemental briefs directed
towards specific topics including the functioning of the
MBB software. In November 2010 the district court
entered an order granting the motion for summary judg-
ment of invalidity. The district court concluded that all
the claims were either anticipated or rendered obvious by
the MBB, and entered a final Judgment under Fed. R.
Civ. Pro. 54(b) for the MySpace parties.
GraphOn timely appealed. Under 28 U.S.C.
§ 1295(a)(1), we have jurisdiction over final judgments
arising under the patent laws.
DISCUSSION
1. Claim Construction
The parties dispute what is covered by the term “da-
tabase,” a term that is found in each of the 73 claims in
the patents-in-suit. Although our precedent establishes
that claim construction is an issue of law that we review
without deference, Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1454–55 (Fed. Cir. 1998) (en banc), we weigh
carefully the guidance provided by the trial court.
If the term “database” is understood to cover different
types of data organization systems, including both file
(hierarchical) and relational systems, then the MBB,
7 MYSPACE v. GRAPHON CORP

which all parties concede is prior art and which taught
the same basic approach as the patents-in-suit, would
invalidate all the claims as either anticipated under 35
U.S.C. § 102 or obvious under § 103. If, on the other
hand, “database” covers only relational systems as urged
by GraphOn, it would not be so clear that the MBB in-
validates the claims because the patents-in-suit would be
understood to disclose and claim a differently-designed
system to accomplish essentially the same end. At a
minimum there would be a genuine issue of disputed fact
on the question of invalidity, and summary judgment
would be inappropriate.
The district court construed “database” to mean “a col-
lection of data with a given structure that can be stored
and retrieved,” thus including both file (hierarchical) and
relational systems. MySpace, Inc., 756 F. Supp. 2d at
1232. This was essentially the construction urged by the
MySpace parties. GraphOn argues that we should re-
verse the district court’s “database” construction and
redefine it as limited to a relational database. In Gra-
phOn’s view, the claims, written description, and file
histories limit the term to relational databases. Thus,
according to GraphOn, hierarchical databases, such as the
file system used by the MBB, cannot be prior art.
In construing the claims, we begin with an examina-
tion of the ordinary and customary meaning of the claim
language itself in the context of the written description of
the invention found in the patent, and the prosecution
history. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13
(Fed. Cir. 2005) (en banc); Medrad, Inc. v. MRI Devices
Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005). Indeed, we
have deemed the written description the “best source” for
understanding the technical meaning of a claim term.
Phillips, 415 F.3d at 1315. But limitations from parts of
the written description, such as the details of the pre-
MYSPACE v. GRAPHON CORP 8

ferred embodiment, cannot be read into the claims absent
a clear intention by the patentee to do so. Teleflex, Inc. v.
Ficosa North Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir.
2002).
It has been suggested that a reading of this court’s
claim construction cases indicates that outcomes depend
on the judges’ predilection for one of two approaches. 2
One approach is to focus on the invention disclosed in the
patent: “[t]ry to understand what the inventor has in-
vented (what he says is his contribution in the art) and
then choose the claim meaning that best fits the inven-
tion.” 3 The other is to focus on the words that the prose-
cuting lawyer used to craft the claims and “then apply
legal rules of construction to divine the meaning of the
claim.” 4 While this is insightful regarding the approaches
highlighted in one or another of our cases, it is an over-
simplification to suggest that these are competing theo-
ries; rather, they are complementary. An inventor is
entitled to claim in a patent what he has invented, but no
more. 5 He can, however, claim less, to avoid prior art or
for any other reason. Therefore, in construing a claim
there are two limiting factors—what was invented, and
what exactly was claimed. To determine the former—
what was invented—we look at the entire patent, with
particular attention to the specification (the written
description of the invention and the several claims made).
To determine the latter—what exactly was claimed—the

2 For a recent exposition of this, see Brad Lyerla,
Understand the Two Approaches to Claim Constructions,
Managing Intellectual Property, November 2011, at 47.
3 Id.
4 Id.
5 See Carnegie Mellon Univ. v. Hoffman-La-Roche
Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008); see also Re-
tractable Tech., Inc. v. Becton, Dickinson & Co., 653 F.3d
1296, 1311 (Fed. Cir. 2011) (Plager, J., concurring).
9 MYSPACE v. GRAPHON CORP

focus is on the precise words of the particular claim or
claims at issue; the written description and preferred
embodiments are aids in understanding those words. In
the case before us, proper claim construction requires that
we understand what the invention encompasses as well as
how the claims are stated.
The “Summary of the Invention” section of the written
description for all four of the patents-in-suit broadly
describes the database as being a collection of user entries
that “are automatically collected, classified and
stored . . . in a searchable and retrievable form.” ’538
Patent col.3 ll.2-3. All types of databases—relational,
hierarchical, or otherwise—are searchable and retriev-
able. Thus, nothing in this language serves to limit the
invention to a relational database.
Further, the “Background of the Invention” section
discusses the limitations of prior art systems in placing
“databases of various kinds” directly on the web, and
suggests that the disclosed invention overcomes those
disadvantages. See, e.g., ’538 Patent col.1 l.37 and col.2
ll.57-58. Taken together, this language indicates that the
general term “database” in the claims can encompass any
of the “various kinds” of databases known in the art at
that time.
GraphOn argues that the “various kinds” modifier
used in the written description was meant to refer to
various kinds of relational databases as opposed to the
structure of the database itself. We agree with the dis-
trict court that this argument is not supported by the
context. For example, the “Detailed Description of the
Preferred Embodiments” section discusses a type of
search called a “category search” in which the
“[c]ategories are represented in computer memory in the
form of a tree structure . . . [in which] the user can click
MYSPACE v. GRAPHON CORP 10

on any category to go to the next level, and can click on
any entry to bring up the mini page of the entry.” ’538
Patent col.11 ll.1-7. Such “tree structure” terminology is
more consistent with the organizational structure of a
hierarchical database rather than a relational database.
While this preferred embodiment does not itself limit
the claims, it does suggest that the inventors intended
that the invention encompass various database features,
including those of hierarchical databases. See Helmsder-
fer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383
(Fed. Cir. 2008) (“Our case law generally counsels against
interpreting a claim term in a way that excludes the
preferred embodiment from the scope of the invention.”).
Because the preferred embodiments describe features
contained in multiple types of databases 6 and the written
description is devoid of a clear indication that the inven-
tion should be limited to one particular type of database,
it would be improper to limit the construction to rela-
tional databases.
Thus we conclude that the district court’s claim con-
struction of “database” is both reasonable and supported
by the context.
2. Invalidity Under §§ 102 and 103
The district court held all the claims at issue invalid
under a combination of sections 102 and 103 of the Patent
Act. We review a district court’s grant of summary judg-
ment of invalidity without deference, drawing all reason-
able inferences in favor of the non-movant and reapplying
the standards used by the district court. Slip Track Sys.,
Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1262 (Fed. Cir.

6 See, e.g., col.4 ll.11-14 (discussing features of rela-
tional databases) and col.11 ll.1-7 (discussing features of
hierarchical databases).
11 MYSPACE v. GRAPHON CORP

2002). When, as here, the facts underlying an invalidity
determination are not in dispute, we determine “whether
summary judgment of invalidity is correct by applying the
law to the undisputed facts.” Tokai Corp. v. Easton
Enters., Inc., 632 F.3d 1358, 1366 (Fed. Cir. 2011).
Even given the district court’s construction of the
term “database,” GraphOn argues that the district court
erred in its conclusion that all the claims were either
invalid as being anticipated under 35 U.S.C. § 102 or
obvious under 35 U.S.C. § 103. GraphOn argues that the
court merely analyzed the claims on a limitation-by-
limitation basis rather than discussing the claim lan-
guage as a whole. It is certainly true that section 102
speaks in terms of “the invention” having been in public
use more than one year prior to the date of the application
for patent, and that section 103 requires that the subject
matter “as a whole” would have been obvious at the time
the invention was made. See 35 U.S.C. §§ 102(b), 103(a).
Thus, ordinarily we would expect the district court to
conduct a complete assessment of the claim language.
Trial courts analyzing claim limitations should strive to
connect those limitations to the context of the claim as a
whole when making summary judgment determinations
regarding validity. Such a step may seem a bit pro forma
to some, but as the statute and our cases make clear,
patent claims are not judged solely by their individual
limitations. 7

7 See, e.g., Decisioning.com, Inc. v. Federated Dept.
Stores, Inc., 527 F.3d 1300, 1314 (Fed. Cir. 2008); Texas
Instruments, Inc. v. U.S. Int’l Trade Comm’n, 846 F.2d
1369, 1371 (Fed. Cir. 1988); Ball Corp. v. United States,
729 F.2d 1429, 1437 (Fed. Cir. 1984); In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983).
MYSPACE v. GRAPHON CORP 12

Even so, such a discussion is not necessarily a prereq-
uisite to the grant of summary judgment. In a case such
as this, in which all the claims share a common term that
lies at the heart of the invention, we conclude that the
district court’s analysis of the “database” term adequately
supports the court’s assessment that there is no triable
issue of fact as to whether the MBB is a database as used
in the claims. Thus we find no error in the trial court’s
overall conclusion that the claims are anticipated or
obvious.
3. Invalidity Under § 101
The dissent proposes that this appeal should be de-
cided under § 101 of the Patent Act, the section that
describes what inventions are eligible for patenting,
rather than, as we have done, under §§ 102 and 103,
anticipation and obviousness. The dissent considers the
subject matter eligibility requirements contained in § 101
to be an “antecedent question” that must be addressed
before the court can reach the §§ 102 and 103 issues. Slip
op. at 2. That position is not unique to the dissent; one
can find support for it, as the dissent notes, in the litera-
ture and in the language found in some cases. 8 Other

8 There is no shortage of judicial dicta to that effect.
See, e.g., Dealertrack, Inc. v. Huber, Nos. 2009-1566, 2009-
1588, 2012 WL 164439, at *14 n.3 (Fed. Cir. Jan. 20,
2012) (“With all due respect, the dissent’s effort to define
a more efficient judicial process, as laudable a goal as that
may be, faces several obstacles. First, the Supreme Court
characterizes patent eligibility under § 101 as a ‘threshold
test.’ Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010)”); see
also, Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech.,
543 F.3d 657, 661 (Fed. Cir. 2008) (”It has long been
understood that the Patent Act sets out the conditions for
patentability in three sections: sections 101, 102, and
103.” (citing Graham v. John Deere Co. of Kansas City,
383 U.S. 1 (1966))).
13 MYSPACE v. GRAPHON CORP

voices, however, urge judicial restraint in the face of what
has become a plethora of opinions adding to our § 101
jurisprudence. 9
At issue here was the validity of four patents, with all
four patents addressing the same general subject matter.
The trial court had before it several summary judgment
motions challenging the validity of the patents under
§§ 102 and 103 of the Patent Act. The trial court decided
the case under those sections, finding the patents invalid,
and that is the judgment now on appeal. Nevertheless,
the dissent argues forcefully that we should not, indeed
we cannot, reach those issues until we first address the
§ 101 question, stating that “[a] robust application of
section 101 is required to ensure that the patent laws
comport with their constitutionally-defined objective.”
Slip op. at 13. In the dissent’s view, the patents in this
case fall well short of the requirements under § 101 for
patentable subject matter and thus are invalid, agreeing
with the trial judge (and with us), but getting there
through a different jurisprudential path.
Even assuming we could reach out for the § 101 issue
without having it raised by the parties or decided by the
trial court, there is an even more basic problem with the
dissent’s position. The problem with addressing § 101
initially every time it is presented as a defense is that the
answer in each case requires the search for a universal
truth: in the broad sweep of modern innovative technolo-
gies, does this invention fall outside the breadth of human
endeavor that possibly can be patented under § 101?
The Supreme Court recognizes that Congress in-
tended in this general provision that the patent laws

9 See, e.g., the additional views of C.J. Rader and J.
Newman, in Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057, 1073-1075 (Fed. Cir. 2011).
MYSPACE v. GRAPHON CORP 14

should be given wide scope. Diamond v. Chakrabarty,
447 U.S. 303, 308 (1980). However, the Court has estab-
lished, again in broad terms, three areas of activity that
are excepted. These exceptions, according to the Court,
are “laws of nature, physical phenomena, and abstract
ideas.” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010)
(citing Chakrabarty, 447 U.S. at 309). Over the years
courts have found dealing with “laws of nature” and
“physical phenomena” reasonably manageable. Though
hardly brightline, 10 the standards that have emerged
from the cases addressing these exceptions provide
workable guidance. 11
When it comes to explaining what is to be understood
by “abstract ideas” in terms that are something less than
abstract, courts have been less successful. 12 The effort
has become particularly problematic in recent times when
applied to that class of claimed inventions loosely de-
scribed as business method patents. If indeterminacy of
the law governing patents was a problem in the past, 13 it
surely is becoming an even greater problem now, as the
current cases attest.

10 For a recent effort at providing a “brightline,” not
particularly well-received, see the Government’s proposed
“magic microscope” test for defining laws of nature. Ass’n
for Molecular Pathology v. U.S. Patent & Trademark
Office, 653 F.3d 1329, 1353 (Fed. Cir. 2011).
11 See, e.g., the “big three”: Diamond v. Diehr, 450
U.S. 175 (1981); Parker v. Flook, 437 U.S. 584, 593 (1978);
Gottschalk v. Benson, 409 U.S. 63 (1972).
12 As this court recently observed, “laws of nature
and physical phenomena cannot be invented. Abstract-
ness, however, has presented a different set of interpre-
tive problems . . . .”, Ultramercial, LLC v. Hulu, LLC, 657
F.3d 1323, 1326 (Fed. Cir. 2011).
13 S. Jay Plager, Challenges for Intellectual Property
Law in the Twenty-First Century: Indeterminancy and
Other Problems, 2001 U. Ill. L. Rev. 69 (2001).
15 MYSPACE v. GRAPHON CORP

In an attempt to explain what an abstract idea is (or
is not) we tried the “machine or transformation” for-
mula—the Supreme Court was not impressed. Bilski, 130
S. Ct. at 3226-27. We have since acknowledged that the
concept lacks of a concrete definition: “this court also will
not presume to define ‘abstract’ beyond the recognition
that this disqualifying characteristic should exhibit itself
so manifestly as to override the broad statutory categories
of eligible subject matter . . . .” Research Corp. Techs., Inc.
v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir. 2010).
Our opinions spend page after page revisiting our
cases and those of the Supreme Court, and still we con-
tinue to disagree vigorously over what is or is not pat-
entable subject matter. See, e.g., Dealertrack, Inc. v.
Huber, Nos. 2009-1566, 2009-1588, 2012 WL 164439 (Fed.
Cir. Jan. 20, 2012) (Plager, J., dissenting-in-part); Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057
(Fed. Cir. 2011) (Moore, J., dissenting); Ass’n for Molecu-
lar Pathology, 653 F.3d 1329 (Fed. Cir. 2011) (concurring
opinion by Moore, J., dissenting opinion by Bryson, J.); see
also In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009)
(Newman, J., concurring).
This effort to descriptively cabin § 101 jurisprudence
is reminiscent of the oenologists trying to describe a new
wine. They have an abundance of adjectives— earthy,
fruity, grassy, nutty, tart, woody, to name just a few 14 —
but picking and choosing in a given circumstance which
ones apply and in what combination depends less on the
assumed content of the words than on the taste of the
tongue pronouncing them.
Beyond railing at the problem, there is the alternative
that Congress has provided—a clear path for courts in

14 Richard P. Vine, Ph.D., Wine Appreciation 439-65
(2d ed. 1997).
MYSPACE v. GRAPHON CORP 16

deciding the question of patent validity. In section 282 of
the Patent Act, Congress created a presumption of valid-
ity for an issued patent, and then specified the “defenses
in any action involving the validity . . . of a patent.”
These are “any ground specified in part II of this title as a
condition of patentability” (emphasis added), and “failure
to comply with any requirement of sections 112 or 251 of
this title.” 15 The two sections of part II that Congress has
denominated as “conditions of patentability” are § 102
(“novelty and loss of right to patent”) and § 103 (“nonobvi-
ous subject matter”).
In each of sections 102, 103, and 112, the validity is-
sue turns on whether one or more of the particular claims
in the patent are rendered invalid by the specific criteria
of the statutory section as applied to that claim. These
criteria are well developed and generally well under-
stood. 16 In most cases when properly applied they will

15 Section 251 of the Patent Act relates to “Reissue
of defective patents,” an issue not involved in this case.
16 See, e.g., Graham, 383 U.S. 1 (1966) (stating the
framework for an objective analysis for determining
obviousness under 35 U.S.C. § 103); Merck & Co., Inc. v.
Teva Pharm. USA, Inc., 347 F.3d 1367, 1372 (Fed. Cir.
2003) (“An ‘anticipating’ reference must describe all of the
elements and limitations of the claim in a single refer-
ence, and enable one of skill in the field of the invention to
make and use the claimed invention.”); Ariad Pharm., Inc.
v. Eli Lilly & Co., 598 F. 3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (“the test for [written description] is whether
the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing
date.”); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)
(listing “[f]actors to be considered in determining whether
a disclosure would require undue experimentation” to
assess compliance with the enablement requirement of 35
U.S.C. § 112); and Metabolite Labs., Inc. v. Lab. Corp. of
Am. Holdings, 370 F.3d 1354, 1366, (Fed. Cir. 2004) (“The
17 MYSPACE v. GRAPHON CORP

address the specifics of the case and decide that particular
case, nothing more. No universal truths need be found
that are necessarily applicable to the scope of patents
generally, and in deciding the case the corpus of jurispru-
dence need not be expanded, contracted, redefined, or
worse, become the source of yet more abstractions.
Rather than taking the path the dissent urges, courts
could avoid the swamp of verbiage that is § 101 by exer-
cising their inherent power to control the processes of
litigation, Chambers v. NASCO, Inc., 501 U.S. 32, 43
(1991), and insist that litigants initially address patent
invalidity issues in terms of the conditions of patentabil-
ity defenses as the statute provides, specifically §§ 102,
103, and 112. If that were done in the typical patent case,
litigation over the question of validity of the patent would
be concluded under these provisions, and it would be
unnecessary to enter the murky morass that is § 101
jurisprudence. This would make patent litigation more
efficient, conserve judicial resources, and bring a degree of
certainty to the interests of both patentees and their
competitors in the marketplace.
In a sense, § 101 of the Patent Act can be thought of
as the patent law analogy to the Bill of Rights of the
Constitution. The latter sets in the broadest terms (“due
process,” “equal protection”) the fundamental parameters
of the citizenry’s legal right. In the context of patent law,
§ 101 similarly describes in the broadest terms the le-
gally-protected subject matter an inventor can seek to
patent: a “process, machine, manufacture, or composition
of matter . . . .” The Supreme Court has wisely adopted a

requirement to ‘distinctly’ claim [under 35 U.S.C. § 112
¶ 2] means that the claim must have a meaning discerni-
ble to one of ordinary skill in the art when construed
according to correct principles.”).
MYSPACE v. GRAPHON CORP 18

policy of not deciding cases on broad constitutional
grounds when they can be decided on narrower, typically
statutorily limited, grounds. 17 Following the Supreme
Court’s lead, courts should avoid reaching for interpreta-
tions of broad provisions, such as § 101, when more spe-
cific statutes, such as §§ 102, 103, and 112, can decide the
case.
It is interesting to note that the United States in its
amicus curiae brief to the Supreme Court in the Prome-
theus litigation—a long-running § 101 dispute that has
had two trips to the Supreme Court from this court—
noted to the Court, and indeed devoted part of its brief to,
the likelihood that the disputed claims were invalid under
§§ 102 or 103. 18 The point being that, in complex cases
such as that one, it is better to leave the question of
validity to those specific provisions of the Patent Act
which, as the Government states, “permit more nuanced
factual distinctions [and] are the principal tools that
Congress has provided for ‘drawing a line between the
things which are worth to the public the embarrassment
of an exclusive patent, and those which are not.’” Id. at
32 (citing Graham, 383 U.S. 1, 9 (1966) quoting Thomas

17 See Roberts, C.J., (dissenting) in Boumediene v.
Bush, 553 U.S. 723, 805-06 (2008): (“If there is one doc-
trine more deeply rooted than any other in the process of
constitutional adjudication, it is that we ought not to pass
on questions of constitutionality . . . unless such [ques-
tions are] unavoidable,” citing Spector Motor Service, Inc.
v. McLaughlin, 323 U.S. 101, 105 (1944), and “Constitu-
tional questions should not be decided unless ‘absolutely
necessary to a decision of the case,’” (quoting Burton v.
United States, 196 U.S. 283, 295 (1905) in Ashwander v.
TVA, 297 U.S. 288, 347 (1936) (Brandeis, J., concurring)).
18 See Brief for the United States as Amicus Curiae
Supporting Neither Party at 26-32, Mayo Collaborative
Serv. v. Prometheus Labs., Inc., (No. 10-1150), 2011 WL
4040414.
19 MYSPACE v. GRAPHON CORP

Jefferson). What a waste of time and resources it would
prove to be if the dispute between the Prometheus parties
eventually gets resolved on the grounds the Government
predicts.
Adopting this practice would also preclude § 101
claims from becoming the next toss-in for every defen-
dant’s response to a patent infringement suit, particularly
in business method litigation. We wrestled for years with
the toss-in problem when defendants claimed “inequitable
conduct” in just about every infringement case. Only
recently did we finally fashion the stopper, which we hope
will work. Therasense, Inc. v. Becton, Dickinson & Co.,
649 F.3d 1276 (Fed. Cir. 2011). 19 We need not go through
a similar exercise with § 101.
Does this mean that § 101 can never be raised ini-
tially in a patent infringement suit? No. For one, in
certain technology fields, and particularly when laws of
nature or physical phenomena are the issue, efficiency
may dictate applying the coarse filter of § 101 first to
address legitimate questions of patent eligibility. See, e.g,
Ass’n for Molecular Pathology, 653 F.3d 1329 (patentabil-
ity of isolated DNA). Even when the patent invokes the
abstractness issue, such as in a business method patent, if
it is clear and convincing beyond peradventure—that is,
under virtually any meaning of “abstract”—that the claim
at issue is well over the line, then a case could be made

19See, e.g., Lee F. Johnston, The Therasense Deci-
sion: Just What the Doctor Ordered or Will the Inequita-
ble Conduct Plague Mutate and Survive?, 23 No. 9 Intell.
Prop. & Tech. L.J. 14 (2011); and Zhe Peng et al., A Pana-
cea for Inequitable Conduct Problems or Kingsdown
Version 2.0? The Therasense Decision and a Look into the
Future of U.S. Patent Law Reform, 16 Va. J.L. & Tech.
373 (2011).
MYSPACE v. GRAPHON CORP 20

for initially addressing the § 101 issue in the infringement
context.
But that latter patent would be a rather unusual and
infrequent circumstance. More often, when the question
of abstractness is presented in its usual abstract terms,
the trial court could as a matter of case management
summarily put aside the § 101 defense on whatever
grounds seem applicable in the case. The litigants will
then be left to address the invalidity defenses of §§ 102,
103, and 112, as the statute provides, and the litigants,
the trial court, and this court on review would have some
semblance of a chance at arriving at a predictable and
understandable result. 20
In the case before us, for all these reasons the proper
course of action is the one that the trial court and the
panel majority has followed: decide the case on the ques-
tion of compliance with §§ 102 and 103 as Congress has
instructed, and decline the dissent’s invitation to put the
parties and this court in the swamp that is § 101 juris-
prudence.
4. Other Issues
GraphOn raises a number of other issues regarding
which it also finds fault with the trial court’s determina-
tions. We find none of them persuasive, nor, in the face of

20 Ultimately, the solution to solving the puzzle of
§ 101 will require close collaboration between the courts
and the Patent and Trademark Office (PTO), the latter
providing an initial forum for understanding what can
and cannot be patented. How best to structure that
collaboration so as to maximize efficiency and fairness for
both inventors and competitors remains to be seen. The
PTO has begun the process—see “Interim Guidance for
Determining Subject Matter Eligibility for Process Claims
in View of Bilski v. Kappos.” 75 Fed. Feg. 43,922 (July 27,
2010).
21 MYSPACE v. GRAPHON CORP

the invalidity determination set forth above, in any way
determinative.
GraphOn first asserts that the district court improp-
erly concluded that the MBB stored images. According to
GraphOn, the MBB did not actually store images, but
instead it stored hyperlinks to places where the images
could be retrieved. Consequently, because the image
itself was not stored in the MBB database GraphOn
argues that it cannot invalidate the claims.
We are not persuaded by this argument. It is undis-
puted that the MBB had the ability to include a user-
supplied image. MySpace, Inc., 756 F. Supp. 2d at 1238.
Based on the trial court’s construction of the term “im-
age,” which has not been appealed, whether an image is
displayed by physically storing the image in the database
or storing a hyperlink in the database is irrelevant. We
also agree with the trial court that even if the MBB
somehow did not describe the image limitation due to its
use of hyperlinks, it would have been obvious to one of
ordinary skill in the art to have modified the database to
allow for the uploading of actual images.
GraphOn also takes issue with the trial court’s analy-
sis of whether “transaction ID,” a claim limitation found
in the claims of the ’538 Patent, was anticipated or ren-
dered obvious by the MBB. The court adopted the parties’
proposed definition that “transaction ID” means “a unique
identifier for a particular database entry.” Id. at 1239.
GraphOn argues that because the transaction IDs of the
MBB would sometimes be reused, they were not unique.
GraphOn also alleges that in order to make changes to an
entry in the MBB, the entire entry had to be deleted and
recreated. Because the newly created entry did not
necessarily have the same transaction ID as the original
MYSPACE v. GRAPHON CORP 22

entry, GraphOn argues that the transaction ID did not
continue throughout the life of the MBB entry.
Again, we are not persuaded by either of these posi-
tions. The trial court concluded, and we agree, that MBB
entries maintained the same transaction ID number for
the life of the entry and there is no evidence indicating
that the same transaction ID would appear more than
once in the MBB at a given time. Id. at 1240. Thus, there
is no error in the court’s conclusion that no triable issue of
fact exists regarding the “transaction ID” limitation.
GraphOn further argues that the district court erred
in its determination “that at least one user of the MBB
used a password to restrict access to an entry.” Id. at
1241. GraphOn’s position appears to be that because the
password protection feature in the MBB did not prevent
the administrator from deleting entries, there is an issue
of material fact as to whether the MBB’s password fea-
ture constituted password protection as used in the
claims. Again, we disagree with GraphOn. The court
adopted the parties’ agreed upon construction that “pass-
word protecting” means “restricting access to the data by
means of a password.” Id. at 1240. We agree with the
trial court that this construction “does not require that
the system require passwords in all instances, or that the
system restrict access by all other users.” Id.
Lastly, GraphOn asserts that the district court erred
in its determination that the MBB describes the “update”
and “modify” limitations contained within the ’940 and
’034 patents. Specifically, GraphOn asserts that MBB
entries were not actually “updated” when users made
changes to existing entries, but instead they were re-
placed. The entry was dropped from the file system and
replaced with a new entry. We agree with the trial court
that the specification does not require the updating to be
23 MYSPACE v. GRAPHON CORP

carried out in any particular manner. Id. at 1242. Con-
sequently, the fact that an MBB entry was replaced in the
file system as opposed to being edited makes no difference
in the validity analysis.
For the aforementioned reasons, we find no error in
the trial court’s determinations regarding these issues.
Finally, GraphOn asserts broadly that the district
court erred in its application of the Graham factors used
for determining whether a patent can be invalidated for
obviousness, and in particular with regard to evidence of
secondary considerations of nonobviousness. In Graham
the Supreme Court held that four factual findings should
be made before invalidating a patent for obviousness: (1)
the scope and content of the prior art; (2) the level of
ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary
considerations of nonobviousness. Graham, 383 U.S. 1,
17-18 (1966). GraphOn asserts that the district court
failed to make specific findings on each of these Graham
factors in its summary judgment opinion and that this
lack of specific findings implies that the court erred.
We do not require that district courts enumerate each
of the Graham factors when making an obviousness
determination. “Where the record adequately supports
the judgment, the district court does not have an obliga-
tion to recite every detail of its reasoning.” Lexion Med.
LLC v. Northgate Techs, Inc., 641 F.3d 1352, 1359 (Fed.
Cir. 2011). While it would certainly assist the parties and
the appeals court if the district court more clearly recited
its reasoning regarding each of the Graham factors, we do
not wish to overburden our trial courts when the record
establishes that the evidence was properly before and
considered by the court. See Specialty Composites v.
Cabot Corp., 845 F.2d 981, 990 (Fed. Cir. 1988) (“It would
MYSPACE v. GRAPHON CORP 24

have been preferable if the court had enumerated the
Graham factors and systematically presented its analysis
in terms of these factors. However, there is no reversible
error if the required factual determinations were actually
made and it is clear that they were considered while
applying the proper legal standard of obviousness.”); see
also Apple Computer, Inc. v. Articulate Systems, Inc., 234
F.3d 14, 26 (Fed. Cir. 2000) (“A failure to enumerate and
analyze the Graham factors explicitly is not necessarily
reversible error, provided the proper factual determina-
tions were made and the court considered them in render-
ing its conclusion of obviousness.”). Here, the parties
presented extensive arguments both through their briefs
and during the hearing regarding the Graham factors
and, in particular, GraphOn’s assertions of secondary
considerations of nonobviousness. Seeing no error in the
trial court’s handling of this evidence, we affirm.
CONCLUSION
For the foregoing reasons, we affirm the district
court’s order granting summary judgment of invalidity of
the patents-in-suit.
AFFIRMED
 United States Court of Appeals
for the Federal Circuit
__________________________

MYSPACE, INC.,
Plaintiff-Appellee,
and
FOX AUDIENCE NETWORK, INC.,
Third Party Defendant-Appellee,
and
CRAIGLIST, INC.,
Plaintiff-Appellee,
v.
GRAPHON CORPORATION,
Defendant/Third Party Plaintiff-Appellant.

__________________________

2011-1149
__________________________

Appeal from the United States District Court for the
Northern District of California in consolidated case nos.
10-CV-0604 and 10-CV-1156, Judge Elizabeth D. LaPorte.
__________________________

MAYER, Circuit Judge, dissenting.
The issue of whether a claimed method meets the sub-
ject matter eligibility requirements contained in 35 U.S.C.
§ 101 is an “antecedent question” that must be addressed
before this court can consider whether particular claims
MYSPACE v. GRAPHON CORP 2

are invalid as obvious or anticipated. In re Comiskey, 554
F.3d 967, 975 n.7 (Fed. Cir. 2009). GraphOn Corporation
(“GraphOn”) owns four patents, U.S. Patent Nos.
6,324,538 (the “’538 patent”), 6,850,940, 7,028,034, and
7,269,591, which contain exceedingly broad claims to a
system that allows users to exert control over the content
of their online communications. This court must first
resolve the issue of whether the GraphOn patents are
directed to an unpatentable “abstract idea” before pro-
ceeding to consider subordinate issues related to obvious-
ness and anticipation. See Bilski v. Kappos, 130 S. Ct.
3218, 3225 (2010) (noting that whether claims are di-
rected to statutory subject matter is a “threshold test”);
Parker v. Flook, 437 U.S. 584, 593 (1978) (“Flook”) (em-
phasizing that “[t]he obligation to determine what type of
discovery is sought to be patented” so as to determine
whether it falls within the ambit of section 101 “must
precede the determination of whether that discovery is, in
fact, new or obvious”); Comiskey, 554 F.3d at 973 (“Only if
the requirements of § 101 are satisfied is the inventor
allowed to pass through to the other requirements for
patentability, such as novelty under § 102 and . . . non-
obviousness under § 103.” (citations and internal quota-
tion marks omitted)). I therefore respectfully dissent
from the court’s judgment.
I.
“[A] principle is not patentable. A principle, in the
abstract, is a fundamental truth; an original cause; a
motive; these cannot be patented, as no one can claim in
either of them an exclusive right.” Le Roy v. Tatham, 55
U.S. (14 How.) 156, 175 (1853). In Bilski, the Supreme
Court rejected a method of hedging against risk in the
commodities markets as an unpatentable “abstract idea.”
130 S. Ct. at 3230 (“[A]ll members of the Court agree that
the patent application at issue here falls outside of § 101
3 MYSPACE v. GRAPHON CORP

because it claims an abstract idea.”). The Court explained
that Bilski’s application essentially disclosed “the basic
concept of hedging, or protecting against risk” and that
allowing him “to patent risk hedging would preempt use
of this approach in all fields, and would effectively grant a
monopoly over an abstract idea.” Id. at 3231.
The claims of the GraphOn patents are significantly
broader in scope and have the potential to wield far
greater preemptive power than those at issue in Bilski.
In the mid-1990s, companies frequently relied on online
service providers such as Yahoo! Corporation (“Yahoo”) to
advertise their products and services on the Internet. See
MySpace, Inc. v. GraphOn Corp., 756 F. Supp. 2d 1218,
1223 (N.D. Cal. 2010) (“District Court Deci-
sion”). According to GraphOn, Yahoo “arbitrarily edited
and categorized each listing or database entry,” which
resulted in Internet listings that contained “typographical
errors” and “were difficult to search.” Id. The patents-in-
suit purport to solve this problem by creating a system
that allows users to control the content and categorization
of their own database entries. See ’538 patent, col. 2,
ll.61-64 (“The present invention . . . uses a computer
network and a database to provide a hardware-
independent, dynamic information system in which the
information content is entirely user-controlled.”). Gra-
phOn alleges that its patents “changed the state of the art
by empowering [users] to create an Internet or network
presence under their own terms and for much cheaper.”
Appellant Br. 12.
The potential scope of the GraphOn patents is stag-
gering. They arguably cover any online system in which
users control the content and categorization of their own
communications. The claims thus cut across vast swaths
of the Internet and potentially extend to most online
advertising and social networking sites. See id. at 44
MYSPACE v. GRAPHON CORP 4

(stating that adoption of GraphOn’s claimed method has
been so “widespread” that it “approach[es] the level of a
universal standard”). Indeed, GraphOn has already
asserted its patents against many of the most influential
participants in the Internet marketplace, including Ya-
hoo, Google Inc., MySpace, Inc., Fox Audience Network,
Inc., craigslist, Inc., AutoTrader.com, and eHarmony.com.
See Joint App’x 35. To date, GraphOn has succeeded in
obtaining lump-sum licensing agreements worth nearly
$10 million for use of its claimed system. See Appellant
Br. 12; Joint App’x 1607.
In rejecting Bilski’s application, the Supreme Court
noted that “[h]edging is a fundamental economic practice
long prevalent in our system of commerce and taught in
any introductory finance class.” Bilski, 130 S. Ct. at 3231
(citations and internal quotation marks omitted). The
GraphOn patents are likewise directed to a fundamental
and widely understood concept. The idea that informa-
tion can be stored in a computer database by one person
and then accessed, in an unedited form, by another person
is a fundamental tenet of network computing and one that
is likely to be taught in any basic computer science course.
Indeed, as the common specification to the GraphOn
patents correctly notes, the claimed system operates much
“[l]ike a publically-accessible bulletin board” because “the
content that is posted . . . is entirely within the control of
the user, both at the time the entry is posted and all times
thereafter.” ’538 patent, col.10, ll.38-41.
The methods disclosed in Bilski’s application and in
the GraphOn patents are not unpatentable because they
lack any practical utility. To the contrary, they fall
outside the ambit of section 101 because they are too
useful and too widely applied to possibly form the basis of
any patentable invention. Bilski’s claimed method was
rejected because avoiding excessive economic risk has
5 MYSPACE v. GRAPHON CORP

long been a cornerstone of commercial enterprise. See
Bilski, 130 S. Ct. at 3231. Here, the concept of allowing
users to control the content of their online communica-
tions is “abstract” because free and unrestricted Internet
communication has become a staple of contemporary life.
Permitting GraphOn to exert monopoly power over any
online system that allows users to control the content of
their own communications would preempt use of one of
the “basic tools” of modern social and commercial interac-
tion. 1 Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Ben-
son”) (emphasizing that “abstract intellectual concepts are
not patentable, as they are the basic tools of scientific and
technological work”); Flook, 437 U.S. at 593 n.15 (explain-
ing that “in granting patent rights, the public must not be
deprived of any rights that it theretofore freely enjoyed”
(citations and internal quotation marks omitted)).
GraphOn cannot avoid the strictures of section 101
simply because its claimed method discloses very specific
steps for allowing users to create and modify database
entries. The Supreme Court has rejected the argument
“that if a process application implements a principle in
some specific fashion, it automatically falls within the
patentable subject matter of § 101 . . . .” Flook, 437 U.S.
at 593. Indeed, Bilski’s application was deemed unpat-
entable notwithstanding the fact that claim 4 recited a
mathematical formula for implementing the claimed
method, Bilski, 130 S. Ct. at 3223, and claim 7 disclosed a
specific method of using historical weather-related data in
order to calculate how much a seller would “gain from
each transaction under each historical weather pattern,”
id. at 3224 (citations and internal quotation marks omit-

1 The GraphOn patents likewise raise significant
First Amendment concerns by granting a private party
the right to impose broad restrictions on the free flow of
ideas and information over the Internet.
MYSPACE v. GRAPHON CORP 6

ted). See also Flook, 437 U.S. at 593-95 (concluding that a
very specific method for updating an alarm limit during a
catalytic conversion process was impermissibly abstract);
Benson, 409 U.S. at 67-70 (rejecting as unpatentable a
specific method of converting binary-coded decimals into
pure binary numerals).
“[T]he patent system represents a carefully crafted
bargain that encourages both the creation and the public
disclosure of new and useful advances in technology, in
return for an exclusive monopoly for a limited period of
time.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 63 (1998). A
patentee does not uphold his end of this “bargain” if he
seeks broad monopoly rights over a basic concept or
fundamental principle without a concomitant contribution
to the existing body of scientific and technological knowl-
edge. Bilski’s application was rejected because it did not
“add” anything to the basic concept of hedging against
economic risk. Bilski, 130 S. Ct. at 3231 (emphasizing
that Bilski’s “claims add even less to the underlying
abstract principle than the invention in Flook did”). The
claimed hedging method was deemed impermissibly
abstract because it was implemented using only “familiar
statistical approaches” and “well-known random analysis
techniques.” Id. at 3224, 3231 (emphases added). In
Benson, likewise, the Court rejected a method as patent
ineligible where the mathematical procedures required by
the claimed algorithm could “be carried out in existing
computers long in use, no new machinery being neces-
sary.” 409 U.S. at 67. Similarly, in Flook, the Court
rejected an application where the claimed algorithm
would be applied to “an otherwise conventional method”
for catalytic conversion. 2 437 U.S. at 588.

2 The question of whether a claimed method is im-
plemented using only conventional or well-known means
7 MYSPACE v. GRAPHON CORP

Many software and business method patents simply
describe a basic, well-known concept that has been im-
plemented or applied using conventional computer tech-
nology. These “inventions” rely on functions—such as
storing data, and organizing, outputting, and displaying
information—that any general purpose computer rou-
tinely performs. While running a particular process on a
computer undeniably improves efficiency and accuracy,
cloaking an otherwise abstract idea in the guise of a
computer-implemented claim is insufficient to bring it
within section 101. 3 See Flook, 437 U.S. at 586 (rejecting

is, of course, directly relevant to the issue of whether it
satisfies section 103’s non-obviousness requirements.
However, that question can also be important in deter-
mining whether a claimed method recites patent eligible
subject matter. To the extent that a claimed method can
be implemented using “well-known . . . techniques,”
Bilski, 130 S. Ct. at 3231, “existing computers,” Benson,
409 U.S. at 67, or “conventional method[s],” Flook, 437
U.S. at 588, it is likely that the applicant is seeking
patent protection for an idea itself rather than for a
particular application of that idea. In essence, the use of
conventional technology to implement an otherwise
abstract idea is insufficient to bring a process within the
ambit of section 101 because it constitutes nothing more
than “insignificant postsolution activity.” Diamond v.
Diehr, 450 U.S. 175, 191-92 (1981) (“Diehr”) (“[I]n-
significant postsolution activity will not transform an
unpatentable principle into a patentable process.”).
3 In Diehr, the Supreme Court made clear that an
application drawn to statutory subject matter does not
become patent ineligible simply because it recites the use
of a computer. 450 U.S. at 185. The Court noted that
“[i]ndustrial processes” have historically been eligible for
patent protection and concluded “that a physical and
chemical process for molding precision synthetic rubber
products falls within the § 101 categories of possibly
patentable subject matter.” Id. at 184. The Court em-
MYSPACE v. GRAPHON CORP 8

an application disclosing an algorithm that was “primar-
ily useful for computerized calculations”); Benson, 409
U.S. at 71 (rejecting claims drawn to a method of convert-
ing binary-coded decimals which had “no substantial
practical application except in connection with a digital
computer”); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011) (concluding that a method
of detecting credit card fraud was patent ineligible, not-
withstanding the fact that the patent recited the use of
existing computers and the Internet). Given the ubiquity
of computers in contemporary life, allowing a process to
become patentable simply because it is computer-
implemented or invokes the use of the Internet would
render the subject-matter eligibility criteria contained in
section 101 virtually meaningless. See Dealertrack, Inc. v.
Huber, Nos. 2009-1566, 2009-1588, 2012 U.S. App. LEXIS
1161 at *48-49 (Fed. Cir. Jan. 20, 2012) (concluding that
claims drawn to a “computer-aided” method of processing
information through a clearinghouse fell outside the
ambit of section 101); CyberSource, 654 F.3d at 1375
(emphasizing “that the basic character of a process claim
drawn to an abstract idea is not changed by claiming only
its performance by computers, or by claiming the process
embodied in program instructions on a computer readable
medium”).

phasized that the application was “not limited to the
isolated step of programming a digital computer,” but
instead “describe[d] a process of curing rubber beginning
with the loading of the mold and ending with the opening
of the press and the production of a synthetic rubber
product that has been perfectly cured—a result heretofore
unknown in the art.” Id. at 193 n.15 (internal quotation
marks omitted). In other words, the application was
patent eligible because it did not simply take a well-
known concept or algorithm and implement it on a com-
puter, but instead disclosed a new—“heretofore unknown
in the art”—technology for curing rubber.
9 MYSPACE v. GRAPHON CORP

In 1995, when the parent application for the GraphOn
patents was filed, the Internet had already undergone
“explosive” growth. ’538 patent, col.1, ll.16-20. Further-
more, the practices of posting and searching for informa-
tion over the Internet and of creating a searchable
computer database were well-established. See District
Court Decision, 756 F. Supp. 2d at 1222-25, 1232, 1239-
41. It appears, therefore, that GraphOn simply took the
concept of allowing a user to control the content and
categorization of his own communications and imple-
mented it using conventional computer technology.
II.
There are those who suggest section 101 should func-
tion as a wide and “broadly permissive” portal to pat-
entability. Ultramercial, LLC v. Hulu, LLC, 657 F.3d
1323, 1326 (Fed. Cir. 2011). They take the view that
section 101 is a “coarse eligibility filter” and that other
patent validity requirements—such as novelty, see 35
U.S.C. § 102, non-obviousness, see id. § 103, and adequate
written description, see id. § 112—should be used to weed
out patents of dubious quality. Research Corp. Techs.,
Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010);
but see Classen Immunotherapies, Inc. v. Biogen IDEC,
659 F.3d 1057, 1076 (Fed. Cir. 2011) (Moore, J., dissent-
ing) (arguing that a method directed to a schedule for
administering immunizations “claimed a monopoly over
the scientific method itself” and was “so basic and ab-
stract as to be unpatentable subject matter” under section
101).
There are several insurmountable problems with this
approach. First, it has, as a practical matter, proved
woefully inadequate in preventing a deluge of very poor
quality patents. See Bilski, 130 S. Ct. at 3259 (Breyer, J.,
joined by Scalia, J., concurring in the judgment) (noting
MYSPACE v. GRAPHON CORP 10

that patents granted in the wake of State St. Bank &
Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368,
1373 (Fed. Cir. 1998), have “ranged from the somewhat
ridiculous to the truly absurd” (citations and internal
quotation marks omitted)). “[T]here is no evidence that
relying on §§ 102, 103, or 112 will solve the problem [of
poor quality business method and software patents]. This
claim was made ten years ago. It is still being made now.
At what point does this argument run out of credibility?”
Gerard N. Magliocca, Patenting the Curve Ball: Business
Methods and Industry Norms, 2009 BYU L. Rev. 875, 900
(2009) (footnote omitted).
More fundamentally, there is nothing in Bilski to sug-
gest that section 101 can be subverted by a misplaced
reliance on sections 102, 103, or 112. To the contrary, the
Court reaffirmed section 101’s vital role by emphasizing
that “[c]oncerns about attempts to call any form of human
activity a ‘process’ can be met by making sure the claim
meets the requirements of § 101.” Bilski, 130 S. Ct. at
3226. Thus, while the scope of section 101 is broad, it is
not unbounded. Id. at 3225. Prohibitions against patent-
ing abstract ideas, physical phenomena, and laws of
nature “have defined the reach of the statute as a matter
of statutory stare decisis going back 150 years.” Id.
Indeed, the Court has explicitly rejected the contention
that the section 101 subject matter eligibility analysis can
be subsumed by the section 102 novelty and section 103
obviousness inquiries. See Flook, 437 U.S. at 588 (reject-
ing an application under section 101 even where it was
“assume[d]” that the application met the requirements of
sections 102 and 103); see also Diehr, 450 U.S. at 190
(“The question . . . of whether a particular invention is
novel [under section 102] is wholly apart from whether
the invention falls into a category of statutory subject
11 MYSPACE v. GRAPHON CORP

matter.” (citations and internal quotation marks omitted)
(emphasis added)).
Bilski contains nothing to indicate that patents on
methods of doing business will, as a general matter, meet
section 101’s subject matter eligibility requirements. 4
Four justices of the Supreme Court concluded that claims
drawn to methods of doing business are categorically
ineligible for patent protection. Bilski, 130 S. Ct. at 3243
(Stevens, J., dissenting) (emphasizing that “regardless of
how one construes the term ‘useful arts,’ business meth-
ods are not included”). While the five remaining justices
declined to categorically exclude business methods from
the scope of section 101, the Court 5 had nothing positive
to say about affording patent protection to such methods.
To the contrary, the Court emphasized that “[i]f a high
enough bar is not set when considering patent applica-
tions of this sort, patent examiners and courts could be
4 The costs of our broken patent system are not ab-
stract. See L. Gordon Crovitz, “Google, Motorola and the
Patent Wars,” Wall St. J., Aug. 22, 2011. Because tech-
nology companies are forced to spend enormous sums
defending against vague and overbroad software and
business method claims, they have far fewer dollars to
expend on research and development. Id. (“Hobbled by a
costly patent system, the technology industry is not the
engine for global wealth and productivity it could be.”).
5 Significantly, Justice Scalia did not join large sec-
tions of the plurality opinion. While he joined the portion
of the Court’s opinion stating that business methods
qualified as “processes” and were therefore not categori-
cally excluded from the scope of section 101, Bilski, 130 S.
Ct. at 3228, he did not join Part II-C-2 of the opinion,
which states that “the Patent Act leaves open the possibil-
ity that there are at least some processes that can be
fairly described as business methods that are within
patentable subject matter under § 101,” id. at 3229.
MYSPACE v. GRAPHON CORP 12

flooded with claims that would put a chill on creative
endeavor and dynamic change.” Id. at 3229. 6 In fact, the
Court gave a broad “hint” that while such methods were
not categorically excluded from the scope of section 101,
the statute’s abstract idea exception might be an appro-
priate vehicle by which this court could invalidate patents
on methods of doing business:
[I]f the Court of Appeals were to succeed in defin-
ing a narrower category or class of patent applica-
tions that claim to instruct how business should
be conducted, and then rule that the category is
unpatentable because, for instance, it represents
an attempt to patent abstract ideas, this conclu-
sion might well be in accord with controlling
precedent.
Id.
The Patent Clause of the Constitution empowers Con-
gress to provide patent protection “[t]o promote the Pro-
gress of . . . [the] useful Arts, by securing for limited
Times to . . . Inventors the exclusive Right to their . . .
Discoveries.” U.S. Const., art. I, § 8, cl. 8. The Supreme
Court has cautioned that “[t]his is the standard expressed
in the Constitution and it may not be ignored.” Graham
v. John Deere Co., 383 U.S. 1, 6 (1966). By delineating
the “kind of discoveries” that ought to be afforded patent
protection, Flook, 437 U.S. at 593, section 101 is designed
to meet the “great challenge” of “striking the balance

6 The Court also emphasized that “some business
method patents raise special problems in terms of vague-
ness and suspect validity,” and that while the First Inven-
tor Defense Act of 1999, 35 U.S.C. § 273(b)(1), “appears to
leave open the possibility of some business method pat-
ents, it does not suggest broad patentability of such
claimed inventions.” Bilski, 130 S. Ct. at 3229 (citations
and internal quotation marks omitted).
13 MYSPACE v. GRAPHON CORP

between protecting inventors and not granting monopolies
over procedures that others would discover by independ-
ent, creative application of general principles,” Bilski, 130
S. Ct. at 3228. A robust application of section 101 is
required to ensure that the patent laws comport with
their constitutionally-defined objective. See Diehr, 450
U.S. at 192 (explaining that a process claim meets the
requirements of section 101 when, “considered as a
whole,” it “is performing a function which the patent laws
were designed to protect”).