The Name of the Game Is the Claims, Even if Specification Is Shared
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Once again addressing the application of Alice, the US Court of Appeals for the Federal Circuit partially reversed a district court's dismissal of several patents as subject matter ineligible for error in analyzing their claims together because of a shared specification despite different claim features. Weisner v. Google LLC, Case No. 021-2228 (Fed. Cir. Oct. 13, 2022) (Reyna, Hughes, Stoll, JJ.) (Hughes, J., dissenting in part)
Sholem Weisner sued Google for infringement of four related patents describing ways to "digitally record a person's physical activities" and use the digital record. The patents' common specification described how individuals and businesses can sign up for a system to exchange information (e.g., "a URL or an electronic business card"), and as they encounter people or businesses that they want recorded in their "leg history," the URLs or business cards are recorded along with the time and place of the encounters. Google moved to dismiss the suit under Fed. R. Civ. P. 12(b)(6), arguing that the patent claims were directed to ineligible subject matter under 35 U.S.C. § 101, and that Weisner had failed to meet the minimum threshold for plausibly pleading his claim of patent infringement under the Twombly and Iqbal standards (Twiqbal). The district court agreed and granted dismissal under Twiqbal. After holding a hearing on patent ineligibility, the district court also granted dismissal under § 101 but granted Weisner leave to amend his complaint. In his amended complaint, Weisner added infringement allegations, allegations related to patent eligibility and an "Invention Background and System Details Explained" section. Google again moved to dismiss the amended complaint based on both § 101 and Twiqbal, which the district court granted. Weisner timely appealed.
The Federal Circuit applied the Alice two-step analysis to determine whether the claims at issue were directed to a patent-ineligible concept, such as an abstract idea, and if they were, whether the elements of each claim, both individually and as an ordered combination, transformed the nature of the claim into a patent-eligible application. As discussed in the Supreme Court cases Alice and Mayo, the second step is "a search for an ‘inventive concept'—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'"
There were four asserted patents in issue. For the first two patents, Weisner attempted to argue that the claims improved "the functioning of the computer itself" or "an existing technology process" by " automatically recording physical interactions and  limiting what is recorded to only specific types of interactions that are pre-approved and agreed to by an individual member and a vendor member." However, the Federal Circuit was unconvinced that this was the type of improvement found in Enfish to bring claims into the realm of inventiveness. Instead, the Court agreed with the district court that, consistent with past precedent, this was no different than travel logs, diaries, journals or calendars used to keep records of a person's location, and that mere automation or digitization of a conventional method of organizing human activity did not make the claims non-abstract nor did appending conventional steps at a high level of generality. Weisner also attempted to argue that the claims were directed only to capturing the travel history of "members," thereby improving the "integrity" of the data and avoiding an "inundation of information making it useless." However, the Court found that these were not true technological advantages and, importantly, were not recited in the claims or specification.
The Federal Circuit agreed with the district court, finding that the representative claims were directed to an abstract idea of "collect[ing] information on a user's movements and location history [and] electronically record[ing] that data," which was no more than "creating a digital travel log." The Court found no inventive concepts and found the claimed process generic in its technology or device features (e.g., a "processing system that is connected to a telecommunications network," a "URL" and a "handheld mobile communication device.")
Turning to step two of the Alice analysis, the Federal Circuit agreed with the district court, finding that Weisner and the specification confirmed that the claims "rely on the use of existing technology to create a computerized version of [travel] logs and do not ‘focus on a specific means or method that improves the relevant technology,'" and described only conventional components and features. The Court noted the following as examples of conventional components and features: "content [that] is known to those skilled in the art of computer science" and which "can be readily developed or is already known to those skilled in the art"; "handheld electronic network device 22," including "any other handheld electronic device that is typically carried around by people during their day including iPods, cellular telephones"; and referencing a generic "GPS or other navigational system" to create a "geographical place stamp."
Accordingly, the Federal Circuit agreed with the district court that the asserted claims of the first two patents were patent ineligible under § 101.
Turning to the other two asserted patents, the Federal Circuit found error in the district court's step one analysis, specifically its failure to analyze these patents separately from the first two since the claims were different (even if the specifications were the same). The Court found that the representative claims of these patents were directed to creating and using travel histories to improve computerized search results as distinguished from the first patent preamble that recited "creating and/or using physical location histories." As the Court explained, the two patents in the second group had representative claim preambles that recited a "method of enhancing digital search results for a business in a target geographic area using URLs of location histories," and a "method of combining enhanced computerized searching for a target business with use of humans as physical encounter links." Thus, they did not just claim accumulation of physical location histories in a highly generic fashion (as did the two patents in the first group), but rather were limited to use of location histories in digital searches (e.g., in or responsive to "a search query"). Although the Court found that these claims were still directed to an abstract idea under Alice step one, it found that the claims satisfied Alice step two and that Weisner's complaint plausibly alleged that the patents in the second group claimed a specific implementation of the abstract idea that purports to solve a problem unique to the internet. Thus, the Court concluded the claims of these two patents should not be held ineligible under step two at the preliminary stage.
The district court had relied on statements from the amended complaint and specification that conceded that the patentee did not invent a new search engine algorithm and instead "uses the same or similar algorithm used by existing search engines" in rejecting the claims at Alice step two for "confirm[ing] that the patented search and data collection uses conventional techniques without an inventive concept." However, the Federal Circuit concluded that the claims' specificity as to the mechanism(s) through which improved search results were achieved (a "location relationship" with a "reference individual" or the "location history of the individual member" who is running the search in a targeted "geographic area") was sufficient to recite an inventive step under Alice step two.
In his dissent, Judge Hughes pointed to these same prosecution history passages as supporting the contention that the search algorithm was incorrectly alleged to be unconventional, and thus that the claims were patent ineligible. The majority focused on the amended complaint and statement in the prosecution histories that the specific implementations for using the travel histories to prioritize the order of the search results operate differently than conventional methods and solve an internet-centric problem. The majority found disclosure of a new search engine algorithm not necessary since the claims did not concern searching for new information per se, but rather a new technique for prioritizing the results of the conventional search.
Judge Hughes agreed that the claims of the first two patents were ineligible under § 101 and that the claims of the second group of patents were directed to the abstract idea of "creating and using travel histories to improve computerized search results." However, Judge Hughes argued that since the algorithms used to incorporate location data were routine and conventional, the claims merely add the abstract idea of using location history in a search engine algorithm, and the claims did not solve a problem specific to the internet.
Judge Hughes also argued that the patents only recited a way to achieve improved recommendations found on the internet in conventional ways and not (as in DDR Holdings) in a manner "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." He argued that the problem of generic recommendations and the solution of using location information to improve recommendations predated the internet.
Practice Note: Particularly for patent applications, claims or complaints, carefully consider how to differentiate what is conventional in the art and, even if something is conventional, whether it is being used in an unconventional manner. Practitioners should describe solutions to problems as more than mere automation or digitization of pre-internet fixes and instead, as rooted in the inventive technology and reflected in increased functions and efficiencies.
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