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 Internet functionality, can be a patent-eligible concept.

Google moved to dismiss patent infringement claims brought by Sholem Weisner as claiming patent-ineligible subject matter. All four asserted patents shared a specification. Two patents claimed methods for logging a mobile device user’s location data for use in optimizing a search (the “travel log patents”), while the two other patents claimed methods for using travel histories to improve search results (the “search optimization patents”).  Although the district court only analyzed the travel log patents under Alice’s two-part test, it dismissed both the travel log patents and the search optimization patents as patent-ineligible.

On appeal, the Federal Circuit affirmed the district court’s findings regarding the travel log patents.  However, the Federal Circuit reversed the district court’s determination of patent ineligibility regarding the 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 a problem unique to the Internet transformed the claimed subject matter into patent-eligible subject matter.  Specifically, the implementation of physical-travel-history data from a “reference person” to prioritize search results, when conventional search ordering methodologies defaulted to using virtual visitation data to order search results, solved the Internet-specific problem of searches providing impersonal search results.  The Federal Circuit likened the search optimization’s claims to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), which similarly solved an Internet-specific problem by overriding conventional Internet sequences with patented methodology.

Judge Hughes dissented, arguing that the claims recited routine and conventional algorithms for search engine optimization, thus leaving only the abstract idea of using location data to improve search results.  Judge Hughes also argued the problem of search engine optimization is not particular to the Internet, since people in the past have used a reference person’s physical-travel data for recommendations before, like asking friends which restaurants they have visited before.

A Computer Method Claim Must Improve the Functions of the Computer to Survive § 101

In International Business Machines Corp. v. Zillow Group, Inc., Appeal No. 21-2350, the Federal Circuit held that a patentee’s allegation that computer method claims made data analysis more efficient, without reference to the function or operation of the computer itself, was not sufficient to overcome a challenge under 35 U.S.C. § 101.

International Business Machines (“IBM”) sued Zillow for infringement of several patents directed to the graphic display of data on a computer.  Zillow moved for judgment on the pleadings, arguing that several of the asserted patents were directed at ineligible subject matter under 35 U.S.C. § 101.  The district court granted Zillow’s motion as to two patents, finding the patents ineligible.  After applying the two-step framework in Alice, the district court found the patents were “directed to abstract ideas, contain[] no inventive concept, and fail[] to recite 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 step of the Alice framework.  IBM pointed to an expert declaration stating that the claimed method allowed for better visualization of data, which in turn resulted in more efficient data analysis.  The Federal Circuit disagreed, finding that any improved efficiency came from the mere application of an abstract idea rather than an improvement to the functions of the computer itself, as the claims could be performed by hand and would yield the same improved efficiency.  Accordingly, the Federal Circuit affirmed the district court’s finding that the two patents were ineligible under 35 U.S.C. § 101.

Judge Stoll dissented in part, arguing that IBM had adequately alleged that two of the claims were patent eligible.  Judge Stoll reasoned that the claims addressed physical limitations with computer displays wherein large datasets 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 “unanswered questions” raised about asserted claim terms did not render asserted claims indefinite, in light of the specification, prosecution history, and other relevant evidence.

Nature Simulation Systems brought suit against Autodesk in the Northern District of California for infringement of two patents. The district court held the claims at issue invalid on the ground of indefiniteness. The district court recited several “unanswered questions” that Autodesk’s expert raised about terms in the asserted claims. It explained that, even if the questions were answered in the specification, the definiteness requirement was not met because the questions were not answered in the claims.  Nature Simulation Systems appealed.

The Federal Circuit reversed. It reiterated that claims are to be read and understood in light of the specification, the prosecution history, and other relevant evidence. The court explained that claims define the metes and bounds of the invention, but they are not intended to repeat the detailed explanations contained in the specification. Here, the Court stated that the specification described relevant prior art that gave clarity to the claim language. The Federal Circuit also noted that the district court gave no weight to prosecution history showing resolution of an earlier indefiniteness rejection.

Judge Dyk dissented. He argued that the asserted claims should be held invalid as indefinite.  Judge Dyk reasoned that the district court properly applied the standard set forth in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), by reading the patent’s claims in light of the specification and prosecution history to determine whether the claims would inform those skilled in the art about the scope of the invention with reasonable certainty. According to Judge Dyk, there was nothing in the record to suggest someone of skill in the art would have understood the language at issue.