Federal Circuit Says User-Matching Patent Claims are Abstract in Precedential Eligibility Decision

“A patentee must do more than invoke a generic need for claim construction or discovery to avoid grant of a motion to dismiss under § 101.” – Federal Circuit

In a precedential decision authored by Judge Tiffany Cunningham on Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled that two patents for methods of connecting users based on their answers to polling questions were directed to patent ineligible subject matter under 35 U.S.C. § 101.

U.S. Patent Nos. 9,087,321 and 10,936,685 are owned by Trinity Info Media, LLC and are titled “Poll-Based Networking System.” The U.S. District court for the Central District of California granted Covalent, Inc.’s motion to dismiss under Rule 12(b)(6), finding that the claims were directed to the abstract idea of “matching users who gave corresponding answers to a question” and did not contain an inventive concept.

Trinity argued that the district court should have conducted claim construction and discovery before analyzing the claims under Section 101, but the CAFC disagreed and explained that “[a] patentee must do more than invoke a generic need for claim construction or discovery to avoid grant of a motion to dismiss under § 101.” Instead, said the court, the patent holder must “propose a specific claim construction or identify specific facts that need development and explain why those circumstances must be resolved before the scope of the claims can be understood for § 101 purposes.”

Turning to the two-step Alice-Mayo test, the court next found that the claims were directed to the patent ineligible concept of “matching based on questioning” at step one, and rejected Trinity’s arguments that the patents claim an advance over the prior art because prior art inventions were not carried out on mobile phones; did not employ “multiple match servers”; and did not employ “match aggregator[s]”. “Even accepting these statements as true, the claims are directed to nothing more than performing the abstract idea of matching on a mobile phone,” said the court.

The CAFC said that Trinity’s claim that “humans could not mentally engage in the ‘same claimed process’ because they could not perform ‘nanosecond comparisons’ and aggregate ‘result values with huge numbers of polls and members,’ nor could they select criteria using ‘servers, storage, identifiers, and/or thresholds,’” was not “tethered to the asserted claims, which do not require ‘nanosecond comparisons’ or aggregating ‘huge numbers of polls and members.’”

Citing Electric Power Group. and ChargePoint, Inc. v. SemaConnect, Inc., the court also noted that it has held before that claims requiring “generic computer components” or “operations that a human could not perform as quickly as a computer” can still be directed to an abstract concept. Trinity’s reliance on generic computing terms like “data processing system,” “processors” and “memory” further doomed the claims, said the court, since they confirmed that the claims don’t require specialized computing components but, rather, “provide a generic technical environment for performing the abstract idea.”

Trinity’s argument that its “non-traditional design” that allowed for “rapid comparison and aggregation of result values even with large numbers of polls and members” should have been more thoroughly considered by the district court, but the CAFC said “[t]he use of a unique identifier does not prevent a claim from being directed to an abstract idea.”

At step two, the court said Trinity failed to adequately allege that the claims contained an inventive concept. Trinity’s “conclusory statements” about the prior art compared with the invention are not enough to demonstrate an inventive concept, said the court, and its arguments that conventional components used in an expected manner are enough to provide an inventive concept also failed. As to the argument that the use of a handheld device, use of a matching application, or that certain claims permit review of matches using swiping demonstrate an inventive concept, the court was also unpersuaded. “Just as a claim is not rendered patent eligible by stating an abstract idea and instructing ‘apply it on a computer,’ a claim is not rendered patent eligible merely because the abstract idea is applied on a handheld device or using a mobile application,” said the court.

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7 comments so far.

Curious
July 17, 2023 01:02 pm
Had the practitioner claimed how the computer system is comparing the answers to polling questions in a way that incorporates the unique ID (i.e., steps of an algorithm), or claimed how the likelihood of match is calculated (i.e., steps of an algorithm), there’s a decent chance the 101 issue could likely have been avoided.
No. And it would have been painfully easy to design around the claims.

You used the example of “comparing the selected answer against the selected answers of other users, based on the unique identification, to generate a likelihood of match between the user and each of the other users.” I can imagine there are dozens/hundreds of ways by which such a comparison can be made. And what happen if only only cover one of those ways (or perhaps a handful)? I have a claim that is trivially designed around and the patent might as well be invalid in the first place for all of the value it would provide.

Moreover, even if I provided the “steps of an algorithm” used to perform this function, it will in all likelihood the algorithm could be declared as merely as being just some form of gathering data/processing data/providing data, which is patent ineligible under Electric Power Group.

Simply put, (1) adding limitations directed to data processing isn’t going to save anything and (2) even if, by chance, they did save the patent from 101, the added limitations are likely to render the patent easily designed around.

The claims in the ‘123 patent entitled “A Construction Vehicle with Dual Electric Battery and Hydrogen Engines” are directed to the abstract idea of applying a force to an object.
There is next to nothing I cannot invalidate under 101 using the (il)logic of the Federal Circuit.
Lab Jedor
July 17, 2023 12:16 pm
The problem is not with the invention. It is with the courts. Nothing what the inventors change in the claims changes the nature of the invention. It is a myth that things would be better if we only had better patents.

Here is another precedential case:

The claims in the ‘123 patent entitled “A Construction Vehicle with Dual Electric Battery and Hydrogen Engines” are directed to the abstract idea of applying a force to an object.

Humans and animals have been applying forces to objects since the beginning of time. Leveraging force to amplify its effect is well known. Animals such as horses or other external forces such as wind and water have been applied as a source for force for millennia.

Furthermore, it is well known that non-human forces are not needed to achieve a greater force. Pyramids in Egypt have been built using strictly or pre-dominantly human force. Human force can be amplified by using more human power.

Thus, an engine is nothing more than the abstract idea of organizing and applying a force to an object. Therefore, the claims are directed to the abstract idea of applying a force “by using two different types of engines” and do not contain an inventive concept.

Furthermore, the claims are substantially directed to “construction” which is a well-known form of the ineligible subject matter of doing business.
Addy
July 17, 2023 11:37 am
We live in an environment set by the case law of this issue. You can complain about it all you want, but you’re going to do yourself or your client a disservice if you don’t change your actions. IMHO, saying “do it on a computer/processor” should be enough to “do it on a computer/processor” as an indication of not being “done in the human mind”. Also IMHO, the “abstractness” should be addressed with 102 and 103, not 101. But we don’t live in that world.

The practitioner in this case, similar to many others that have fallen for the same reason(s), missed their opportunity. They called out verbs in the independent claims that imply the computer doing something technically interesting, but stopped at the verbs:

– “comparing … based on the unique identification”
– “generate a likelihood of match …”

Unfortunately, those verbs are all we see in the claims. The practitioner deftly avoided providing any algorithmic structure to how the actions implied by those verbs are technically being carried out. This lets the Court interpret the “how” contemplated by those verbs – and it’s not good (remember – the Court has opposing counsel ‘helping’ them in the interpretation).

Had the practitioner claimed how the computer system is comparing the answers to polling questions in a way that incorporates the unique ID (i.e., steps of an algorithm), or claimed how the likelihood of match is calculated (i.e., steps of an algorithm), there’s a decent chance the 101 issue could likely have been avoided.
Model 101
July 17, 2023 10:09 am
Another one bites the dust.

Is a good idea. Unfortunately you just told big tech how to do it.

More nonsense.
Anon
July 17, 2023 09:44 am
What (from those who have taken the time to develop informed opinions) makes this CAFC opinion to be especially precedential?
Pro Say
July 16, 2023 09:34 pm
Yet more CAFC, SCOTUS-be-d.a.m.n.e.d innovation destruction.

The name of the game is the shame.
Lab Jedor
July 16, 2023 01:07 pm
This is one of the cases that should be patent eligible under the new Patent Eligibility Bill.

Even though it appears substantially “social” in nature, the claims require that all steps be performed by processors. Dependent claims require: “the operations are practiced in a distributed computer environment.” This tells us unequivocally that the claims cannot be performed practically (and thus infringed) without a computer.

Some may argue that this is an immaterial limitation, just made to make the claims patent-eligible. And that is the reason why we have that “safe-harbor” clause in the Bill. It provides the plain meaning of what we intend to achieve. If that Clause doesn’t work, the whole new Bill framework is worthless.

If we agree that the “safe-harbor” does the trick, then we get finally beyond all this nonsense talk about “directed to an abstract idea”.

The Court held in its decision that: “These independent claims are focused on “collecting information, analyzing it, and displaying certain results,” which places them in the “familiar class of claims ‘directed to’ a patent-ineligible concept.” It is a recurring theme that we badly need to get rid of. Computers do certain things, exactly because they are computers. To keep repeating this type of misguided hocus-pocus by the Judiciary as a deep insight into the nature of technology should finally end. It is one thing to say: unfortunately we have to do this because of SCOTUS. To say this because you actually believe it is laughable and shameful.