Weisner v. Google LLC, Appeal No. 2021-2228 (Fed. Cir. Oct. 13, 2022)

In its only precedential patent case this last week, the Federal Circuit again revisited the thresholds for disposing of cases under Section 101, brought on a motion to dismiss.  In a split decision, the Court affirmed the dismissal of two patents, but reversed the district court concerning two other patents, all of which shared the same specification.  For those two patents, the Court held that dismissal on Section 101 grounds was improper because it was plausible the patents disclosed an “inventive concept.”

The four patents shared a common specification, which concerned ways to digitally record a person’s physical activities and ways to use this digital record.  The specification contemplates accumulating data about a person’s movements (in and out of different stores, for example) over time.  The information is then used to “enhance web searching results.” 

Although the patents shared a common specification, they covered different elements of the invention in their claims.  Claim 1 of the ’202 patent recited recording “physical location histories” of “individual members” that visit “stationary vendor member[s]” in a “member network.”  The claim, which is very long, also includes generic hardware and software components and features such as a “telecommunications network,” “database,” “application,” “handheld mobile communication device,” and whatnot.  Claim 1 of the ’910 patent is similar. 

The representative claims of the other two patents have a different focus: using physical location histories to improve computerized search results.  The preamble of one of them (the ‘911 patent) recites “enhancing digital search results . . . using URLs of location histories.”  The other preamble (the ‘905 patent) recites “combining enhanced computerized searching . . . with use of humans as physical encounter links.”

The district court found all four patents ineligible under Section 101 on a motion to dismiss.

The Federal Circuit affirmed with respect to the ’202 and ’910 patents.  First, it held that the patents concerned abstract ideas—a generic process for achieving the goal of creating a digital travel log.  A digital travel log is, according to the Court, an abstract idea.  The Court rejected Weisner’s assertion that these patents covered improvements to the functionality of the underlying computer network.  The Court also found these claims did not contain an inventive concept sufficient to survive step two of the requisite Section 101 analysis.  The Court noted that the specification listed generic components to implement the digital travel log, which “support[s] the conclusion that these components and features are conventional, not inventive concepts in the patents.”

With respect to the ’911 and ’905 patents, the Court took a different approach, acknowledging the different focus of these two patents.  Like with the first two patents, the Court held that these two patents also covered an abstract idea, however, “[w]hether these claims are directed to an abstract idea presents a much closer question than the claims in the ’202 and ’910 patents.”  But at step two, the Court held that these patents plausibly recited an “inventive concept,” at least sufficient to survive a motion to dismiss.  Specifically, the ’905 patent, for example, “plausibly captures an inventive concept in the form of a specific technique for using physical location history data to improve computerized search results.”  This, the Court noted, is more than just the concept of improving a web search using location history—“it is a specific implementation of that concept.”  This specific implementation “is also alleged to solve a problem particular to the Internet.”  The Court analogized the case to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), one of the first cases to be considered by the Federal Circuit following the Supreme Court’s decision in Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014).  In that case, the patent purported to disclose a solution to a problem unique to the Internet, and how users interact with the Internet.

Finding that the patents at issue in this case were similar to the patents in DDR, the Court reversed and remanded with respect to those two patents for further proceedings.

Judge Hughes issued a six-page opinion, concurring with respect to the ’202 and ’910 patents and dissenting with respect to the ’911 and ’905 patents.  Judge Hughes would have found all four patents ineligible for patenting under Section 101.

The opinion can be found here.

By: Nika Aldrich