Avoiding § 101 Eligibility Issues in Internet-Centric Method Claims
In Weisner v. Google LLC, Appeal No. 21-2228, the Federal Circuit held that the specific implementation of an abstract idea, such as improving the functionality of the Internet, may be a patentable concept.
Google has decided to dismiss the patent infringement claims filed by Sholem Weisner as claiming patent-ineligible subject matter. The four claimed patents shared a specification. Two patents claimed methods of recording location data of a mobile device user for use in optimizing a search (the “travel log patents”), while the other two patents claimed methods of using travel histories to improve search results (the “search optimization patents”). Although the District Court only analyzed the travel journal patents under from Alice two-part test, it rejected both the travel journal patents and the search optimization patents as ineligible for patents.
On appeal, the Federal Circuit upheld the district court’s findings regarding the travel journal patents. However, the Federal Circuit reversed the district court’s ruling regarding patent ineligibility regarding search optimization patents. The Federal Circuit determined that the claims of the search optimization patents were directed to an abstract idea. However, the specific implementation of this abstract idea to solve an Internet-specific problem transformed the claimed subject matter into patentable subject matter. Specifically, the implementation of physical travel history data of a “reference person” to prioritize search results, when conventional search ordering methodologies defaulted to using virtual visit data to order search results. search results, addressed the Internet-specific issue of searches providing impersonal search results. . The Federal Circuit compared the search optimization claims to DDR Holdings, LLC v Hotels.com, LP773 F.3d 1245 (Fed. Cir. 2014), which also solved an Internet-specific problem by replacing conventional Internet sequences with a proprietary methodology.
Justice Hughes dissented, arguing that the claims set out routine and conventional algorithms for search engine optimization, leaving only the abstract idea of using location data to improve search results. Justice Hughes also argued that the problem of search engine optimization is not unique to the internet, as people in the past have used a reference person’s physical travel data for recommendations, like asking friends which restaurants they’ve been to before.
A computer method claim must improve computer functions to survive § 101
In International Business Machines Corp. against Zillow Group, Inc.Appeal No. 21-2350, the Federal Circuit held that a patentee’s claim that computer method claims make data analysis more efficient, without reference to the function or operation of the computer itself, was not sufficient to overcome a challenge under 35 USC § 101.
International Business Machines (“IBM”) sued Zillow for infringement of several patents relating to the graphical display of data on a computer. Zillow sought judgment on the pleadings, arguing that several of the claimed patents were directed to ineligible subject matter under 35 USC § 101. The district court granted Zillow’s petition for two patents, finding the patents ineligible. After applying the two-step framework in Alicethe district court found that the patents were “directed to abstract ideas, contained no inventive concept, and fails to cite patentable subject matter. IBM appealed.
On appeal, IBM argued that the District Court erred in finding that the claims lacked an inventive concept under the second stage of the Alice frame. IBM pointed to an expert statement indicating that the claimed method allowed for better data visualization, which in turn led to more efficient data analysis. The Federal Circuit disagreed, finding that any improvement in efficiency came from the mere application of an abstract idea rather than from improving the functions of the computer itself, as claims could be done by hand and would give the same improved efficiency. Accordingly, the Federal Circuit upheld the district court’s finding that both patents were ineligible under 35 USC § 101.
Judge Stoll dissented in part, arguing that IBM had correctly argued that two of the claims were eligible for the patent. Judge Stoll found that the claims related to the physical limitations of computer screens in which large sets of data would be “densely packed” and rendered “incomprehensible”.
Expert’s unanswered questions do not make claims indefinite
Nature Simulation Systems Inc. v. Autodesk, Inc., Appeal No. 20-2257, the Federal Circuit held that the “unanswered questions” raised about the terms of the claimed claims did not render the claimed claims indefinite, in light of the specification, prosecution history and other relevant evidence.
Nature Simulation Systems sued Autodesk in the Northern District of California for infringement of two patents. The district court ruled the claims at issue invalid on the basis that they were indefinite. The district court cited several “unanswered questions” that Autodesk’s expert raised about the terms of the asserted claims. She explained that although the questions were answered in the specification, the requirement of precision was not met because the questions were not answered in the claims. Nature Simulation Systems appealed.
The federal circuit has reversed. He reiterated that the claims must be read and understood in light of the specification, prosecution history and other relevant evidence. The court explained that the claims define the limits of the invention, but they are not intended to repeat the detailed explanations contained in the specification. Here, the Court said that the specification described the relevant prior art which clarified the wording of the claim. The Federal Circuit also noted that the district court gave no weight to the lawsuit history showing the resolution of a prior indefinite dismissal.
Justice Dyk dissented. He argued that the asserted claims should be considered invalid as undefined. Judge Dyk held that the district court correctly applied the standard set out in Nautilus, Inc. v. Biosig Instruments, Inc., 572 US 898 (2014), by reading the patent claims in light of the description and prosecution history to determine whether the claims would inform the skilled person of the scope of the invention with reasonable certainty. According to Justice Dyk, there is nothing in the record to indicate that a person skilled in the art would have understood the language in question.