In Weisner v. Google LLC, No. 21-2228, — F.4th — (Fed. Cir. Oct. 13, 2022), the Federal Circuit held that method claims directed toward collecting information are abstract ideas, while method claims directed toward using the information are patent eligible.

Weisner had sued Google for infringing a family of four patents, namely, U.S. Patent Nos. 10,380,202, 10,642,910, 10,394,905 and 10,642,911.

The district court dismissed the case under Rule 12(b)(6), holding that the asserted claims were ineligible under 35 U.S.C. § 101 as being directed towards abstract ideas.

On appeal, the Federal Circuit reversed-in-part, holding that some of the claims are patent eligible because they implement “a specific solution to a problem rooted in computer technology” under step 2 of Alice.

Two-Step Alice Test

The patent-eligibility test under Alice is a two-step test. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). In step one, the court determines whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea. In step two, the court considers the elements of each claim both individually and ‘as an ordered combination' to determine whether the additional elements “transform the nature of the claim” into something patent eligible. The question is whether there is an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than an ineligible abstract idea.

Two Categories of Claims in the Patents-in-Suit

The patents-in-suit all relate to recording a person's physical location history that correspond to certain transactions but are “meaningfully different in their focus.”

For example, method claim 1 of the `202 patent recites recording “physical location histories” of “individual member[s]” that visit “stationary vendor member[s]” in a “member network.” And method claim 1 of the `910 patent is similar but also involves “capture by the particular individual member” that is processed “automatically.” Or, as the Court put it more simply, “the claims are directed to creating a digital travel log.”

The other asserted patents instead are focused “using physical location histories to improve computerized search result.”

Both categories of method claims were found to not meet Alice step 1 because the automation or digitization of a conventional method of organizing human activity like the creation of a travel log on a computer does not bring the claims out of the realm of abstractness. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“[M]ere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is undisputedly well-known.”).

            Turning to step two, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the claims recite “something more” than the abstract idea to transform the nature of the claim into a patent-eligible application. See Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 77–80).

Collecting Info

The Court concluded that the asserted first category of method claims that are directed toward recording “physical location histories” rely on the use of existing technology to create a computerized version of travel logs and do not focus on a specific means or method that improves the relevant technology.

Using Info

As for the second category of method claims that further recited using location histories in computerized searching as a distinct concept from mere accumulation of location histories, the Federal Circuit held that the patentee “has plausibly alleged that the '905 and '911 patent claims recite a specific implementation of the abstract idea that purports to solve a problem unique to the Internet and that, accordingly, these claims should not have been held ineligible under step two at this stage.”

            This is more than just the concept of improving a web search using location history—it is a specific implementation of that concept…

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            This specific implementation is also alleged to solve a problem particular to the Internet. The SAC emphasizes this particular aspect as “something significantly more,” explaining that “when a user will search for a physical location to visit, the inventive system will search a list of the physical location URLs and produce a result, based on: past visit of such user, and past visits of location relatives of such user.” J.A. 2031 (SAC ¶ 21). The SAC explains this feature provides “specifically tailored result[s] to the searcher's unique characteristics” and “eliminates the inherent bias of pushing and referring places through conventional web searches.” J.A. 2031–32 (SAC ¶¶ 22–23). The SAC explains that this is different from the conventional method, in which web searches merely defaulted to the “highest-ranking Uniform Resource Locator (‘URL') link” by using purely “virtual encounters.” J.A. 2029 (SAC ¶¶ 15–16).

            Looking to the intrinsic record, the specification also emphasizes that conventional web searches have a problem of returning voluminous, generic, non-personalized search results. For example, the specification states that the current “process of searching the world wide web does not adequately take cognizance of the unique characteristics and tastes of the searching person.” '905 patent col. 2 ll. 57–60. The solution, according to the specification, is an “improved method of searching the world wide web . . . that makes use of digital histories.” Id. at col. 4 ll. 36–38.

By tying searches to a third-party “reference individual” whose location history is similar to the person doing an internet search, and then prioritizing search results that the reference individual has visited, the Federal Circuit explained that this specific implementation was more than simply improving web search using location history.

Internet-centric Eligibility

The Federal Circuit also noted that it previously has held patent claims eligible at step two when they provided a specific solution to an Internet-centric problem. For example, the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), disclosed a system in which a visitor to a webpage that clicked on an advertisement on that webpage would not be transported to the third-party advertiser's page but instead would remain within the original host's webpage, allowing the host to retain web traffic. Id. at 1257–58. The DDR claims “specify how interactions with the Internet are manipulated to yield a desired result—a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” Id. at 1258.

Dissent

In dissent, Judge Hughes wrote that the second category of method claims also were patent ineligible because “the algorithms used to incorporate location data are routine and conventional.” Thus, those claims use well-understood methods of incorporating browsing history in a search engine, “which is the abstract idea itself.”

Footnote 5 of the majority opinion, however, noted that it is not the algorithm itself that is alleged to be unconventional, but “the specific implementations for using the travel histories to prioritize the order of the search results that operate differently than conventional methods and solve an internet-centric problem.”

Patently-O Comment

As noted by Professor Crouch, this outcome is consistent with medical-related patents where “diagnostics get a thumbs down; therapeutics get a thumbs up” because “it is much easier to protect methods of using information than it is to protect methods of collecting information.”

The attorneys at Thomas P. Howard, LLC litigate patent cases nationwide including in Colorado.