Facts

Windy City Innovations LLC filed suit against Facebook Inc. in relation to Windy City's U.S. Patent No. 8,458,245 entitled Real Time Communications System. The patent was developed under a work for hire agreement between UtiliCorp and American Information Systems Inc., and Daniel Marks was listed as the sole inventor. Marks was an employee of AIS and assigned rights to AIS with respect to the patent. AIS assigned its rights to the patent to its attorney, Peter Tryzna, and Tryzna assigned the rights of the patent to Windy City.

PLAINTIFF'S CONTENTIONS: Windy City argued that the work for hire agreement did not create an automatic assignment to UtiliCorp, and no intellectual property rights were transferred to UtiliCorp. As such, Windy City alleged that the agreement only presented a contingent promise to assign that would not be effectuated until the parties reached a fair market value joint licensing agreement. Windy City contended such an agreement was never reached, so the assignment did not occur, and Facebook's lack of standing argument failed because the assignments leading to Windy City acquiring the rights were valid.

DEFENDANT'S CONTENTIONS: Facebook contended that Windy City had no rights to the alleged inventions in the patent because Marks and AIS never acquired any rights that they could have assigned to Tryzna, so Tryzna never could have assigned any rights to Windy City. Facebook argued that the rights belonged to UtiliCorp based on the work for hire agreement, so the transfers were without effect. Alternatively, Facebook contended that the patent was invalid under 35 U.S.C. Section 101 and "Alice."

Result

The court concluded that the patent was invalid under Section 101 and "Alice" because the recited elements did not transform an abstract idea into an inventive concept. The court found that the patent's claims provided merely an instruction to use conventional elements to achieve a result, omitting instructions as to how they achieve that result outside of conventional use, so they did not describe an inventive concept.