       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

         INTELLECTUAL VENTURES I LLC,
        INTELLECTUAL VENTURES II LLC,
                Plaintiffs-Appellants

                           v.

 ERIE INDEMNITY COMPANY, ERIE INSURANCE
  EXCHANGE, ERIE INSURANCE PROPERTY &
    CASUALTY COMPANY, ERIE INSURANCE
    COMPANY, FLAGSHIP CITY INSURANCE
  COMPANY, ERIE FAMILY LIFE INSURANCE
                 COMPANY,
             Defendants-Appellees
            ______________________

                      2017-1147
                ______________________

   Appeal from the United States District Court for the
Western District of Pennsylvania in No. 1:14-cv-00220-
MRH, Judge Mark R. Hornak.
                ______________________

              Decided: November 3, 2017
               ______________________

    CHRISTIAN JOHN HURT, Nix Patterson & Roach LLP,
Dallas, TX, argued for plaintiffs-appellants. Also repre-
sented by DEREK TOD GILLILAND, Daingerfield, TX.
2            INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.



   GREGORY H. LANTIER, Wilmer Cutler Pickering Hale
and Dorr LLP, Washington DC, argued for defendants-
appellees. Also represented by CLAIRE HYUNGYO CHUNG,
KEITH THOMAS HOWELL; MONICA GREWAL, Boston, MA.
                 ______________________

    Before PROST, Chief Judge, REYNA and WALLACH, Cir-
                      cuit Judges.
WALLACH, Circuit Judge.
    Appellants Intellectual Ventures I LLC and Intellec-
tual Ventures II LLC (together, “IV”) sued Appellees Erie
Indemnity Company et al. (collectively, “Erie”) in the U.S.
District Court for the Western District of Pennsylvania
(“District Court”), alleging infringement of U.S. Patent
No. 7,757,298 (“the ’298 patent”). Erie responded by filing
a motion to dismiss for failure to state a claim under
Federal Rule of Civil Procedure 12(b)(6), asserting that all
claims of the ’298 patent are patent ineligible under 35
U.S.C. § 101 (2012). 1 The District Court granted Erie’s
Motion to Dismiss. See Intellectual Ventures I LLC v. Erie
Indem. Co., 200 F. Supp. 3d 565, 577 (W.D. Pa. 2016).
   IV appeals. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1) (2012). We affirm.
                       DISCUSSION
                  I. Standards of Review
    We review a district court’s dismissal under Rule
12(b)(6) according to the law of the regional circuit, Con-
tent Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. Cir. 2014), here, the
Third Circuit. The Third Circuit reviews de novo a dis-


    1  Congress did not amend § 101 when it passed the
Leahy-Smith America Invents Act. See generally Pub. L.
No. 112-29, 125 Stat. 284 (2011).
INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.             3



trict court’s grant of a motion to dismiss under Rule
12(b)(6). Sands v. McCormick, 502 F.3d 263, 267 (3d Cir.
2007).
     We review issues “unique to patent law,” including
patent eligibility under § 101, consistent with our circuit’s
precedent. Madey v. Duke Univ., 307 F.3d 1351, 1358
(Fed. Cir. 2002) (citation omitted); see Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1340–41 (Fed. Cir. 2013) (reviewing a § 101 question
under Federal Circuit precedent).        A district court’s
determination of patent eligibility under § 101 is an issue
of law that we review de novo. See Intellectual Ventures I
LLC v. Erie Indem. Co., 850 F.3d 1315, 1325 (Fed. Cir.
2017).
  II. The Claims of the ’298 Patent Are Patent Ineligible
                  Under 35 U.S.C. § 101
    “Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and require-
ments of” Title 35 of the United States Code. 35 U.S.C.
§ 101. “The Supreme Court, however, has long interpret-
ed § 101 and its statutory predecessors to contain an
implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable.” Content Extrac-
tion, 776 F.3d at 1346 (internal quotation marks and
citation omitted).
    The Supreme Court’s decision in Alice Corp. Pty. Ltd.
v. CLS Bank International provides the framework
through which we assess patent eligibility under § 101.
See 134 S. Ct. 2347, 2354–55 (2014). A patent
    claim falls outside § 101 where (1) it is “directed
    to” a patent-ineligible concept, i.e., a law of na-
    ture, natural phenomenon, or abstract idea, and
    (2), if so, the particular elements of the claim, con-
4             INTELLECTUAL VENTURES I LLC      v. ERIE INDEM. CO.



    sidered “both individually and ‘as an ordered com-
    bination,’” do not add enough to “‘transform the
    nature of the claim’ into a patent-eligible applica-
    tion.”
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2355). We
analyze the claims against this framework.
                      A. The ’298 Patent
     Entitled “Method and Apparatus for Identifying and
Characterizing Errant Electronic Files,” the ’298 patent
purports to improve upon the prior art by providing a
method and apparatus to detect “undesirable files” “stored
on computer storage devices” “according to pre-set crite-
ria.” ’298 patent col. 1 ll. 59−60, col. 2 ll. 40, 41−42.
Specifically, the ’298 patent teaches a method and appa-
ratus whereby files “can be selected for review and char-
acterized as acceptable or unacceptable,” id. col. 1 ll. 56–
57, which helps combat “great legal risks to [a] corpora-
tion,” id. col. 1 l. 56, from “the presence of certain files
(such as depictions of child pornography or copyrighted
music files),” id. col. 1 ll. 53−55; see id. col. 2 ll. 48−57, col.
3 ll. 28−35 (similar); see also Intellectual Ventures, 200 F.
Supp. 3d at 569 (characterizing the ’298 patent as one
that “recognizes various characteristics of files . . . that
give away illegal, illicit, or offensive content . . . and in so
doing, saves Web hosting services from criminal, copy-
right, or some other liability”). The files, once recognized
as errant files using the ’298 patent’s “file identification
application,” will be marked for deletion from the hosting
server. ’298 patent, Abstract.
    The District Court treated independent claim 1 as
representative of the ’298 patent, Intellectual Ventures,
200 F. Supp. 3d at 568, “and so may we,” Elec. Power, 830
F.3d at 1352. Claim 1 recites:
INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.       5



   A computer-implemented method for identifying
   and characterizing stored electronic files, said
   method comprising:
       under control of one or more configured
       computer systems:
       selecting a file from a plurality of files
       stored in a computer storage medium,
       wherein selecting the file is performed ac-
       cording to at least one of:
           selecting the file based on the size
           of the file by determining whether
           an aggregate size of plural identi-
           cally-sized files exceeds a prede-
           termined threshold;
           selecting the file based on whether
           content of the file matches a file
           type indicated by a name of the
           file; or
           selecting the file based on whether
           the file comprises data beyond an
           end of data marker for the file;
       generating an identification value associ-
       ated with the selected file, wherein the
       identification value is representative of at
       least a portion of the content of the select-
       ed file;
       comparing the generated identification
       value to one or more identification values
       associated with one or more of a plurality
       of unauthorized files; and
       characterizing the file as an unauthorized
       file if the identification value matches one
       of the plurality of identification values as-
       sociated with the unauthorized files.
6            INTELLECTUAL VENTURES I LLC    v. ERIE INDEM. CO.



’298 patent col. 12 ll. 21−44 (emphases added). Relevant
here, claim 1 discloses three selection criteria, any one of
which may be used to identify errant files, with selection
based on: (1) size, i.e., “whether an aggregate size of
plural identically-sized files exceeds a predetermined
threshold,” id. col. 12 ll. 29−30; (2) content, i.e., “whether
content . . . matches a [certain] file type,” id. col. 12 ll.
31−32; and (3) naming convention, i.e., “whether the file
comprises data beyond an end of data marker,” id. col. 12
ll. 33−34.
    B. The Claims of the ’298 Patent Are Directed to an
                       Abstract Idea
    The District Court held that the ’298 patent “merely
claims a computerized solution to a longstanding problem
that exists outside of computers: identifying and catego-
rizing illicit files, the possession of which might subject an
individual or organization to liability.” Intellectual Ven-
tures, 200 F. Supp. 3d at 575. It analogized the patent to
solving problems faced by a “librarian tasked with mark-
ing and removing books containing pornographic material
from a library.” Id. IV contends that the District Court
erred in holding that the claims of the ’298 patent are
directed to an abstract idea. Appellants’ Br. 18−29.
Specifically, IV argues that, because the ’298 patent’s
claims “improve[] upon how computer systems detect
unauthorized files” by teaching a “specific way of identify-
ing unauthorized files using specific selection criteria that
humans did not use,” the patent’s claims are not directed
to an abstract idea. Id. at 20, 29. We disagree with IV.
    “The Supreme Court and we have held that a wide va-
riety of well-known and other activities constitute ab-
stract ideas.” Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1314 (Fed. Cir. 2016) (footnote
omitted); see id. at 1314 n.5 (collecting cases). For exam-
ple, in BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, we held that a claim reciting a “content
INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.             7



filtering system for filtering content retrieved from an
Internet computer network[, e.g., to prevent users from
accessing certain websites,] . . . is [directed to] an abstract
idea.” 827 F.3d 1341, 1348 (Fed. Cir. 2016) (internal
quotation marks and citation omitted). Additionally, in
Content Extraction, we found the claims directed to an
abstract idea where they claimed, inter alia, “collecting
data” and “recognizing certain data within the collected
data set.” 776 F.3d at 1347. In FairWarning IP, LLC v.
Iatric Systems, Inc., we held that an automated system for
“detecting fraud and/or misuse in a computer environ-
ment based on analyzing data” according to “one of sever-
al rules” was directed to an abstract idea. 839 F.3d 1089,
1093 (Fed Cir. 2016) (internal quotation marks and
citation omitted). Finally in CyberSource Corp. v. Retail
Decisions, Inc., we found claims that could be “performed
in the human mind[] or by a human using a pen and
paper” were directed to patent-ineligible mental process-
es. 654 F.3d 1366, 1372 (Fed. Cir. 2011).
     The claims of the ’298 patent teach a method for
“identifying and characterizing” files based on one of three
selection criteria. ’298 patent col. 12 ll. 21−22; see id.
col. 12 ll. 28–34 (listing selection criteria). Taken togeth-
er, the claims are directed to the identification of unwant-
ed files in a particular field (i.e., a computer network) and
otherwise concern data collection related to such identifi-
cation, such that they are directed to an abstract idea
under our precedent. See Elec. Power, 830 F.3d at 1353–
54 (explaining that collection and analysis of information
is directed to an abstract idea); accord Intellectual Ven-
tures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (discussing abstract idea precedent
related to the collection, recognition, manipulation, and
storage of data); Symantec, 838 F.3d at 1314 (characteriz-
ing materials “based on a known list of identifiers” is an
abstract idea).
8            INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.



     The specification lends further support to our conclu-
sion that the claims of the ’298 patent teach an abstract
idea. The specification repeatedly notes that selection of
errant files generally could be performed by humans, see,
e.g., ’298 patent col. 1 ll. 56−58 (stating that, in related
art, “[s]uch files can be selected for review and character-
ized as acceptable or unacceptable . . . using an automat-
ed or manual process”), col. 2 ll. 43−44 (identifying a goal
of the present invention to “reduce[] the amount of manu-
al review necessary”), col. 8 ll. 11−12 (acknowledging, in
conjunction with use of the claimed invention, “it
may . . . be advisable to manually review the file[s]”), col.
8 ll. 40−41 (similar), as IV itself acknowledges, see Appel-
lants’ Br. 29 (“It is true that computer administrators
could manually review computer files and attempt to
identify them as unauthorized.”). Indeed, the specifica-
tion explicitly notes that humans are capable of perform-
ing the first two selection criteria. See ’298 patent col. 2
ll. 20−26 (describing manual review based on “a simple
search for oversized files” and “identifi[cation] by name or
size alone” and the relative shortcomings of such human-
based review).
    The parties dispute whether the third criteria, noting
information beyond an end of data file marker, has a
manual analog. See Appellants’ Br. 26; compare Oral Arg.
at 4:38−52, http://oralarguments.cafc.uscourts.gov/default.
aspx?fl=2017-1147.mp3 (IV: “Past the end of the data file
marker, there could be unauthorized file data associated
with something beside the [file] . . . . That doesn’t show
up in that manual review.”), with id. at 25:53−26:11
(Erie: “I don’t think there’s any argument that, even with
respect to the end of data marker, humans couldn’t do
that, there’s clearly . . . a non-digital analog to it.”). We
have found the idea of performing a search to ferret out
sources with unwanted material “based on characteris-
tics” of the source to be directed to an abstract idea, see
Symantec, 838 F.3d at 1314 (footnote omitted), and the
INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.          9



idea of “recognizing certain data” within a set, without
regard to the individual criteria, to be abstract, see Con-
tent Extraction, 776 F.3d at 1347. As such, the third
criteria and the claims, considering “their character as a
whole,” are directed to a patent-ineligible abstract idea.
Elec. Power, 830 F.3d at 1353 (internal quotation marks
and citation omitted).
     IV attempts to analogize the claims of the ’298 patent
to those involved in McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016) and Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016),
wherein we found claims of software patents were not
directed to abstract ideas under Alice step one. See Appel-
lants’ Br. 20. In McRO, we held that, although the pro-
cesses were previously performed by humans, “the
traditional     process      and   newly   claimed    meth-
od . . . produced . . . results in fundamentally different
ways.” FairWarning, 839 F.3d at 1094 (differentiating
the claims at issue from those in McRO). In McRO, “it
was the incorporation of the claimed rules, not the use of
the computer, that improved the existing technology
process,” because the prior process performed by humans
“was driven by subjective determinations rather than
specific, limited mathematical rules.” 837 F.3d at 1314
(internal quotation marks, citation, and alterations omit-
ted). In contrast, the claims of the ’298 patent merely
implement an old practice in a new environment. See ’298
patent col. 12 ll. 25−44 (describing the process of “select-
ing a file,” “generating an identification value,” “compar-
ing” it to “a plurality of unauthorized files,” and
“characterizing the file as an unauthorized file if the
identification value matches” one of the plurality of previ-
ously-identified unauthorized files). IV has not argued
that the claimed processes of selecting errant files apply
rules of selection in a manner different from those which
humans used, albeit with less efficiency, before the inven-
tion was claimed.
10           INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.



    The ’298 patent’s claims also differ from those found
patent eligible in Enfish, where the claims were “specifi-
cally directed to a self-referential table for a computer
database.” 822 F.3d at 1337. The claims thus were
“directed to a specific improvement to the way computers
operate” rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the ’298 pa-
tent’s claims are not directed to an improvement in the
way computers operate. Though the claims purport to
accelerate the process of finding errant files and to reduce
error, we have held that speed and accuracy increases
stemming from the ordinary capabilities of a general-
purpose computer “do[] not materially alter the patent
eligibility of the claimed subject matter.” Bancorp Servs.,
L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Instead, the claims of the
’298 patent are more analogous to those in FairWarning,
wherein we found claims reciting “a few possible rules to
analyze audit log data” directed to an abstract idea be-
cause they asked “the same questions (though perhaps
phrased with different words) that humans in analogous
situations detecting fraud have asked for decades.” 839
F.3d at 1094, 1095.
     IV’s counterarguments are unpersuasive. First, IV
states that the U.S. Patent and Trademark Office’s
(“USPTO”) Subject Matter Eligibility Guidelines (“Eligi-
bility Guidelines”) advise that the ’298 patent’s claims are
not directed to an abstract idea because they are analo-
gous to exemplary patent-eligible claims that are “di-
rected towards physically isolating . . . and extracting
malicious code . . . to create a sanitized communication in
a new data file.” Appellants’ Br. 22 (quoting J.A. 180); see
id. at 21−23; J.A. 178−80. However, as IV concedes, the
Eligibility Guidelines are “not binding authority” on this
court. Appellants’ Br. 22 n.3; see 2014 Interim Guidance
on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618,
74,619 (Dec. 16, 2014) (noting the Guidelines and accom-
INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.           11



panying explanatory example sets “do[] not have the force
and effect of law”). Moreover, there is a distinct difference
between software designed to root out malware, a concept
the USPTO notes is “inextricably tied to computer tech-
nology,” J.A. 180, and software designed to automate
processes of file categorization and extraction like the
claims of the ’298 patent. The latter merely applies a
well-known idea using generic computers “to the particu-
lar technological environment of the Internet.” DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
(Fed. Cir. 2014).
    Second, IV repeatedly cites to the source code at-
tached to the patent application for the file identification
application limitation recited in claim 10 as evidence of
patent eligibility, see, e.g., Appellants’ Br. 21, 25, 27; and
the dependent claims’ limitations of generating a “check-
sum,” see, e.g., id. at 22, 28 (discussing the checksum
identification values of dependent claims); see also ’298
patent col. 12 l. 51 (claim 3) (“The computer-implemented
method of claim 1, wherein generating an identification
value comprises generating a checksum.”), col. 12 ll.
54−55 (claim 4) (similar, describing multiple checksums
associated with different portions of stored files). Howev-
er, IV has not challenged the designation of claim 1 as
representative, so all claims of the ’298 patent fall with
representative claim 1, which fails the Alice step one
analysis. See Elec. Power, 830 F.3d at 1352 (holding that
all claims were patent ineligible where the appellant
“neither argues for the validity of any other claim . . . nor
presents any meaningful argument for the distinctive
significance of any claims other than those included in
[the representative] claim”). 2 In sum, we find the claims



    2  Even if we consider the dependent claims’ limita-
tions and independent claim 10, our holding would not
change. For claim 10, “the complexity of the implement-
12             INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.



of the ’298 patent directed toward an abstract idea under
Alice step one.
     C. The Claims of the ’298 Patent Do Not Recite an In-
                        ventive Concept
    The second step of the Alice test requires us to deter-
mine whether the subject patent’s claims—when viewed
individually and as an ordered combination—contain “an
inventive concept sufficient to transform the claimed
abstract idea into a patent-eligible application.” 134 S.
Ct. at 2357 (internal quotation marks omitted). A claim
contains an inventive concept if it “include[s] additional
features” that are more than “well-understood, routine,
conventional activities.” Id. at 2357, 2359 (internal
quotation marks, brackets, and citations omitted).
    The District Court held that the claims of the ’298 pa-
tent lack an inventive concept because they recite “generic
functions, even if performed by a computer,” that are not
inventive because “[s]electing files based on identifiers



ing software . . . does not transform a claim reciting only
an abstract concept into a patent-eligible system or meth-
od.” Accenture, 728 F.3d at 1345. IV acknowledges that it
has not claimed the source code, see Appellants’ Br. 7
(stating “the inventor provided the application’s source
code” and “attached [it] as an exhibit” to the patent appli-
cation (citations omitted)), and our § 101 analysis “fo-
cus[es] . . . on whether the claims of the asserted patents
fall within the excluded category of abstract ideas,”
Content Extraction, 776 F.3d at 1346 (emphasis added).
For the dependent claims’ identification of files based on
checksums, we have stated that “[t]he dependent claims’
narrowing [of long familiar practices] to particular types
of . . . relationships . . . does not change the [Alice step
one] analysis.” buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014).
INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.            13



and matching different files/identifiers is just what com-
puters do.” Intellectual Ventures, 200 F. Supp. 3d at 576.
The District Court further held that the USPTO’s allow-
ance of the claims under the pre-Alice “machine-or-
transformation test, by itself, i[s] not sufficient to render a
claim patent-eligible, as not all transformations or ma-
chine implementations infuse an otherwise ineligible
claim with an inventive concept.” Id. at 577 (quoting
DDR Holdings, 773 F.3d at 1256). IV argues that the
District Court erred in its analysis under Alice step two
because the claims of the ’298 patent “recite novel file
identification software that analyzes and identifies files in
unconventional ways—applying three specific selection
criteria and then performing a digital-signature-based
lookup process.” Appellants’ Br. 30. 3 We disagree with
IV.



    3     IV additionally alleges that the District Court im-
properly shifted the burden of proving an inventive con-
cept to IV, failing to follow 35 U.S.C. § 282’s mandate that
“[t]he burden of establishing invalidity of a pa-
tent . . . shall rest on the party asserting such invalidity.”
Appellants’ Br. 36 (quoting 35 U.S.C. § 282). The record
contains no support for this argument. The court below
referenced an earlier decision on related patents in which
it “examined the state of § 101 jurisprudence,” Intellectual
Ventures, 200 F. Supp. 3d at 570, and expressly stated
there that “[Erie] ha[s] the burden of demonstrating the[
patents] are not directed to patent-eligible subject mat-
ter,” Intellectual Ventures I LLC v. Erie Indem. Co., 134 F.
Supp. 3d 877, 896 n.37 (W.D. Pa. 2015), vacated in part on
other grounds, 850 F.3d 1315 (Fed. Cir. 2017). The Dis-
trict Court then reviewed Erie’s submissions and ex-
plained why it found IV’s rebuttal evidence insufficient to
overcome Erie’s showing of patent ineligibility. See
Intellectual Ventures, 200 F. Supp. 3d at 576−77. “Con-
14           INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.



    The claims of the ’298 patent fail to provide an in-
ventive concept. The ’298 patent teaches a method that is
repeatedly and explicitly referred to as “computer-
implemented.” See, e.g., ’298 patent col. 12 ll. 21, 45, 49,
52, 56, 63, 65, col. 13 ll. 1, 4. It further teaches a “com-
puter system” comprised of “a server” and a “file identifi-
cation application,” id. col. 13 l. 7, 8, 11, but it never
suggests that any of these computer components are non-
generic, see generally id. When claims like those in the
’298 patent are “directed to an abstract idea” and “merely
requir[e] generic computer implementation,” they “do[]
not move into [§] 101 eligibility territory.” buySAFE, 765
F.3d at 1354 (internal quotation marks and citation
omitted); see Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)
(“[C]laiming the improved speed or efficiency inherent
with applying the abstract idea on a computer” does not
“provide a sufficient inventive concept.”).
    IV’s counterarguments are unpersuasive. First, IV
looks to the prosecution history of the ’298 patent, arguing
that the three selection steps are not conventional be-
cause they were “added . . . during prosecution to obtain
allowance of the claims.” Appellants’ Br. 34. However,
“[w]hile the claims may not have been anticipated or
obvious because the prior art did not disclose [the selec-
tion criteria], that does not suggest that the idea of [‘se-
lecting’ errant files] is not abstract.” Symantec, 838 F.3d
at 1315; see Diamond v. Diehr, 450 U.S. 175, 188−89
(1981) (“The ‘novelty’ of any element or steps in a process,
or even of the process itself, is of no relevance in deter-



trary to [IV]’s assertions, explaining why a party’s argu-
ments are not persuasive does not constitute improper
burden shifting.” Ignite USA, LLC v. CamelBak Prods.,
LLC, No. 2016-2747, 2017 WL 4548459, at *5 (Fed. Cir.
Oct. 12, 2017).
INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.          15



mining whether the subject matter of a claim falls within
the § 101 categories of possible patentable subject mat-
ter.” (footnote omitted)).
     Second, IV contends that the USPTO’s allowance of
the claims under the machine-or-transformation test
“strongly suggests that the ’298 patent claims patent-
eligible subject matter.” Appellants’ Br. 37 (capitalization
omitted). While the machine-or-transformation test “can
provide a useful clue in the second step of the Alice
framework,” it “is not the sole test governing § 101 anal-
yses.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014) (internal quotation marks and citations
omitted); see Vehicle Intelligence & Safety LLC v. Mer-
cedes-Benz USA, LLC, 635 F. App’x 914, 919 (Fed. Cir.
2015) (“[P]ost-[]Alice, [the machine-or-transformation
test] is no longer sufficient to render a claim patent-
eligible.” (citation omitted)). Under that test, “[a] claimed
process can be patent-eligible under § 101 if,” inter alia,
“it is tied to a particular machine or apparatus.” Ultra-
mercial, 772 F.3d at 716 (internal quotation marks and
citation omitted). In other words, the subject patent must
disclose the use of an apparatus specific to the claimed
invention. See id. The claims of the ’298 patent, by
contrast, disclose the use of general computer compo-
nents. See ’298 patent col. 12 l. 24 (claiming use of “con-
figured computer systems”), col. 12 ll. 25−26 (claiming use
of “a computer storage medium”), col. 13 l. 8 (disclosing “a
server” and “a memory”), col. 13 l. 12 (disclosing a “file
identification application” operative on the server). We
find the claims do not recite an inventive concept under
Alice step two. 4



    4  IV’s additional arguments fail. First, IV contends
that the claims satisfy Alice step two because “[t]hey do
not preempt all―or even most―ways to identify potential-
ly unauthorized files.” Appellants’ Br. 32. We have
16           INTELLECTUAL VENTURES I LLC   v. ERIE INDEM. CO.



                       CONCLUSION
   We have considered IV’s remaining arguments and
find them unpersuasive. For these reasons, the Final
Judgment of the U.S. District Court for the Western
District of Pennsylvania is
                       AFFIRMED




previously considered preemption in both steps one and
two of the Alice test. Compare OIP Techs., Inc. v. Ama-
zon.com, Inc., 788 F.3d 1359, 1362−63 (Fed. Cir. 2015)
(reviewing under step one), with BASCOM, 827 F.3d at
1350 (reviewing under step two). Regardless of which
step the argument is made under, when a patent’s claims
“disclose patent[-]ineligible subject matter . . . , preemp-
tion concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see OIP Techs., 788 F.3d at 1362−63
(“[T]hat the claims do not preempt all [inventions in the
field] or may be limited to [certain processes in the field]
do[es] not make them any less abstract.”). Second, IV
alleges that the District Court improperly granted Erie’s
Motion to Dismiss under Rule 12(b)(6) because it decided
the § 101 issue “without considering a complete record.”
Appellants’ Br. 41 (capitalization omitted); see id. at
41−43. “We have repeatedly recognized that in many
cases it is possible and proper to determine patent eligi-
bility under . . . § 101 on a Rule 12(b)(6) motion.” Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1373 (Fed.
Cir. 2016); see id. at 1373−74 (collecting cases).
