It has been thought by many patent practitioners, based on prior court decisions, that incorporation of a user interface, such as a graphical user interface (GUI), could help to ensure patent-eligibility of claims of a computer-related patent application. In a recent decision by the U.S. Court of Appeals for the Federal Circuit (“the CAFC”), however, the extent to which this is true has been limited.

In prior decisions of the U.S. Court of Appeals for the Federal Circuit (“the CAFC”), such as Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) and Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed Cir. 2018), the CAFC established user interfaces, such as GUIs, as a basis for patent-eligibility, at least when tied to underlying technologies or capabilities of a system.  Based on these decisions, many patent practitioners have been including recitations of user interfaces, particularly GUIs, in writing claims to computer-related inventions.

However, in a recently published decision in Broadband ITV, Inc. v. Amazon.com, Inc., Case No. 2023-1107, slip op. (Fed. Cir. September 9, 2024) (hereinafter “BBiTV”), the CAFC has clarified, and in some ways limited, how user interfaces may support patent-eligibility. In particular, in BBiTV, the plaintiff asserted two patents whose claims included presentation of graphical user interfaces (GUIs) for television program guides with particular structures and/or user-individualization. The lower court held that the claims of one asserted patent “are directed to the abstract idea of receiving hierarchical information and organizing the display of video content.” BBiTV at 11 (quoting Broadband ITV, Inc. v. Amazon.com, Inc., 2022 WL 4703425 at *15 (W.D. Tex. Sept. 30, 2022). Regarding the claims of the other asserted patent, the lower court held that the claims “are directed to the abstract idea of collecting and using a viewer’s video history to suggest categories of video content.”  Id. at 18 (quoting Broadband at *11). On the basis of these understandings, the lower court found that the asserted claims of both patents were invalid under 35 U.S.C. § 101 as being ineligible for patentability.

The CAFC affirmed the lower court’s decision. While BBiTV argued that Core Wireless and Data Engine support the proposition of patent-eligibility for their claims (of both patents), based on the recitations of GUIs, the CAFC disagreed and provided explanations to distinguish BBiTV from these prior CAFC decisions.  Regarding the first asserted BBiTV patent, the court explained that in Core Wireless, the claims were “directed to the features of an improved user interface, including the size and location of the user interface,” while in Data Engine, the claims were directed to a “specific method for navigating through three-dimensional electronic spreadsheets,” where the specification of the patent “identified the shortcomings and technological challenges in computer spreadsheets, and the claims provided a specific solution.”  BBiTV at 13, 19. The CAFC held that neither was the case in the claims of the first patent asserted by BBiTV.

Although BBiTV made similar arguments regarding the claims of the second asserted patent, the court noted that the claims simply mention the use of a user interface and that, therefore, case law such as Core Wireless and Data Engine is not applicable and does not provide a path to patent-eligibility.

Hence, the BBiTV decision has clarified that it is not merely sufficient to use/mention a user interface or even to recite providing a specific user interface in order to overcome patent-ineligibility. Rather, in order to write claims including a user interface so as to overcome patent-ineligibility based on the user interface, it is necessary for the user interface to provide improvements over previous user interfaces in some way or for the user interface to solve some well-defined problem defined in the application. Patent practitioners should take note of this decision and should not rely upon the mere recitation of a user interface as a guarantee of patent-eligibility.