Avoiding Section 101 Eligibility Issues in Internet-Centered Method Claims
In Weisner v. Google LLCAppeal no. 21-2228, the Federal Circuit held that the specific implementation of an abstract idea, such as improving the functionality of the Internet, can be a patent-eligible concept.
Google dismissed the patent infringement claims filed by Sholem Weisner because they claimed ineligible subject matter. All four asserted patents shared one specification. Two patents claimed methods for recording a mobile device user’s location data for use in optimizing a search (the “trip recording patents”), while the other two patents claimed methods for using the travel histories to improve search results (the “search optimization patents”). . Although the district court only analyzed the travel log patents under the two-part Alice 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 with respect to 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 “lead person” to prioritize search results, where conventional search ranking methodologies defaulted to virtual visit data to rank search results. search, solved the Internet-specific problem of searches providing impersonal search results. . The Federal Circuit compared search optimization claims with DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014), which similarly solved a specific Internet problem by overruling conventional Internet sequences with a proprietary methodology. .
Judge Hughes dissented, arguing that the claims recited common and conventional search engine optimization algorithms, leaving only the abstract idea of using location data to improve search results. Judge Hughes also argued that the problem of search engine optimization is not particular to the Internet, as people in the past have used a referral’s physical travel data for recommendations before, such as now ask friends which restaurants they have visited before.
A computer method claim must enhance computer functions 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 in yes, it was not sufficient to overcome a challenge under 35 USC § 101. .
International Business Machines (“IBM”) sued Zillow for infringement of several patents directed at the graphical display of data on a computer. Zillow moved for judgment on the pleadings, arguing that several of the asserted patents were directed to ineligible subject matter under 35 USC § 101. The district court granted Zillow’s motion on two patents, finding them ineligible. After applying the two-step framework in Alice , the district court found that the patents were “directed to abstract ideas, contain[] no inventive concept, and they fail[] to recite patentable matter”. IBM appealed.
On appeal, IBM argued that the district court erred in finding that the claims lacked inventive concept under the second step of the Alice framework. IBM pointed to an expert statement that claimed the claimed method allowed for better visualization of data, 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 an improvement in the functions of the computer itself, since the claims could be perform by hand and would give the same improved efficiency. Accordingly, the Federal Circuit affirmed the district court’s finding that the two patents were ineligible under 35 USC § 101.
Judge Stoll dissented in part, arguing that IBM had properly alleged that two of the claims were patent-eligible. Judge Stoll reasoned that the claims addressed physical limitations with computer screens in which large sets of data would be “densely packed” and become “incomprehensible.”
The expert’s unanswered questions do not render the claims indefinite
Nature Simulation Systems Inc. v. Autodesk, Inc.Appeal no. 20-2257, the Federal Circuit held that “unanswered questions” raised about the terms of the asserted claim did not render the asserted claims indefinite, in light of the specification, prosecution history, and other relevant evidence .
Nature Simulation Systems filed suit against Autodesk in the Northern District of California for infringement of two patents. The district court declared the claims at issue invalid for indefiniteness. The district court recited several “unanswered questions” that Autodesk’s expert raised regarding the terms of the asserted claims. He explained that even if the questions were answered in the terms and conditions, the certainty requirement was not met because the questions were not answered in the claims. Nature Simulation Systems appealed.
The Federal Circuit reversed. He reiterated that claims must be read and understood in light of the specification, processing history and other relevant evidence. The court explained that the claims define the limits and boundaries of the invention, but do not purport to repeat the detailed explanations contained in the specification. Here, the Court held that the specification described relevant prior art that provided clarity to the claim language. The Federal Circuit also noted that the district court gave no weight to the prosecution history showing the resolution of a prior indefiniteness rejection.
Judge Dyk dissented. He argued that the claims asserted should be held invalid as indefinite. Judge Dyk reasoned that the district court correctly applied the standard set forth in Nautilus, Inc. v. Biosig Instruments, Inc., 572 US 898 (2014), reading the patent 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 that anyone skilled in the art would have understood the language in question.
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