This case addresses whether patents relating to methods and systems for connecting users based on their answers to polling questions claim patentable subject matter under 35 U.S.C. § 101.
Trinity sued Covalent for patent infringement of U.S. Patent 9,087,321 (“the ’321 patent”) and U.S. Patent 10,936,685 (“the ’685 patent”) (collectively, “the challenged patents”).
The challenged patents are related and both trace their priority date to U.S. Provisional Application No. 61/309,038, filed on March 1, 2010. The challenged patents both teach a similar claimed invention that is “directed to a poll-based networking system that connects users based on similarities as determined through poll answering and provides real-time results to the users.” ’321 patent col. 1 ll. 53-56. The ’685 patent contains additional disclosures discussing progressive polling for ecommerce systems. ’685 patent col. 2 l. 1 to col. 3 l. 60.
Trinity asserted claims 1-3, 8 and 20 of the ’321 patent and claims 2, 3, 12-14, 16, 17, 20-22, 24 and 25 of the ’685 patent. Covalent filed a motion to dismiss asserting the claims are invalid under 35 U.S.C. § 101. The District Court granted Covalent’s motion to dismiss, finding the asserted claims were directed to the abstract idea of “matching users who gave corresponding answers to a question” and did not contain an inventive concept. The District Court further described claim 1 of the ’321 patent as not improving computer functionality but instead using “generic computer components as tools to perform the functions faster than a human would.”
Whether the challenged patents are directed to an abstract idea and do not include an inventive concept that is an improvement over the general functionality of a computer.
The Federal Circuit affirmed the District Court’s finding that the challenged patents are patent ineligible under § 101.
Section 101 of the Patent Act defines patent-eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has long held that there is an “implicit exception” in § 101 in that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine if claims contain patent-eligible subject matter, the two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77–80 (2012) is applied. Step one, “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Alice, 573 U.S. at 217. Step two, “consider 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 a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78–79). Essentially, step two is described as a search for an “inventive concept” – an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon ineligible subject matter.
When analyzing claims under § 101 for a motion to dismiss, courts may make a determination before conducting claim construction and fact discovery. To invoke a need for claim construction or discovery before an analysis of asserted claims can be made, the patentee must propose a specific claim construction or identify specific facts that need development and explain why those circumstances must be resolved before the scope of the claims can be understood for § 101 purposes. It is not enough to invoke a generic need for claim construction or discovery to avoid a grant of a motion to dismiss under § 101.
Alice/Mayo Step 1
To determine if a claim is directed to a patent-ineligible concept, such as an abstract idea, “the focus of the claimed advance over the prior art [is evaluated] to determine if the claim’s character as a whole is directed to excluded subject matter.” PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310, 1315 (Fed. Cir. 2021) (quoting Intell. Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017)). “[W]hile the specification may help illuminate the true focus of a claim, when analyzing patent eligibility, reliance on the specification must always yield to the claim language in identifying that focus.” Charge-Point, Inc. v. SemaConnect, Inc., 920 F.3d 759, 766 (Fed. Cir. 2019). In the context of software-based inventions, Alice/Mayo step one “often turns on whether the claims focus on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool.” In re Killian, 45 F.4th 1373, 1382 (Fed. Cir. 2022) (quoting Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018)).
The Federal Court determined that the independent claims of the challenged patents are focused on collecting information, analyzing it, and displaying certain results, which places them in a class of claims directed to a patent-ineligible concept, as a human mind could review people’s answers to questions and identify matches based on those answers. While the independent claims may state that such operations be performed in a particular environment, such as on a hand-held device, a web server, a database or a match aggregator, such requirements or limitations to an abstract idea do not change the focus the claims. Additionally, including specificity to the operations as found in the dependent claims, such as performing matches based on gender, varying the number of questions asked, and/or displaying other users’ answers, also do not change the focus of the claims as they merely add trivial variations of the abstract idea.
Although humans could not mentally perform “nanosecond comparisons” and aggregate “result values with huge numbers of polls and members,” as argued by Trinity, the claims do not require such operations. Moreover, even though a human could not perform operations of claims as quickly as a computer using generic computer components, such claims have been found to be directed to an abstract idea. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1351, 1353–54 (Claims were found to be directed to an abstract idea even though a human could not “detect events on an interconnected electric power grid in real time over a wide area and automatically analyz[e] the events on the interconnected electric power grid.”), See Charge-Point, 920 F.3d at 766–67 (Although a human cannot communicate over a computer network without the use of a computer, claims directed to enabling “communication over a network” were held to be focused on an abstract idea.)
The Federal Circuit further found that the challenged patents’ specifications confirm that the asserted claims are directed to an abstract idea that merely seeks to use computers as a tool, not on an improvement in computer capabilities. The specifications of the challenged patents frame the inventor’s problem in terms of how to improve existing polling systems by performing progressive polling and focuses on details of receiving and comparing answers to generate matches, and not on how to improve computer technology. The challenged patents also repeatedly note in the specifications that the invention is not limited to specific technological solutions, including, for example, disclosing that the invention may be practiced without necessarily being limited to the specific details described, that there are numerous techniques for determining a likelihood of a match, and that physical connections, protocols and communication procedures of the Internet are well known to those of skill in the art, confirming that the problem being solved by the invention is the ability to perform the abstract idea of matching based on questioning, and not an improvement to computer technology. Thus, any use of specific components, such as a unique identification, match servers, and a match aggregator, merely place the abstract idea in the context of a distributed networking system and does not change the focus of the asserted claims from an abstract idea, as described in the specification.
Alice/Mayo Step 2
Where a claim is directed to an abstract idea under step 1, it is to be determined whether the claim includes “an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application” and “amounts to significantly more than a patent upon the [ineligible concept] itself,” rather than simply stating the abstract idea while adding the words “apply it.” Alice, 573 U.S. at 217-218, 221. A determination of whether a claim has an “inventive concept” would include an examination of the additional elements of the claim, both individually and as an ordered combination, to determine if such additional elements “transform the nature of the claim” into a patent-eligible application. Mayo, 566 U.S. at 79, 78.
Trinity asserts arguments that the asserted claims contain inventive concepts because the prior art did not include, alone or in combination, certain features disclosed in the asserted claims, including match servers, a match aggregator, a mobile device and a mobile application. Trinity further asserts that because these features are not disclosed in the prior art, the present invention “includes an advance over the prior art and an improvement over a general-purpose computer.” The Federal Circuit has found that conclusory allegations that the prior art lacks elements of asserted claims, and that such elements are an advance over the prior art and an improvement over a general-purpose computer, are insufficient to demonstrate an inventive concept. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“That some of the eleven steps were not previously employed in this art is not enough—standing alone—to confer patent eligibility upon the claims at issue.”); see also Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (“[C]laiming the improved speed or efficiency inherent with applying the abstract idea on a computer [is] insufficient to render the claims patent eligible as an improvement to computer functionality.” (citation omitted), see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”).
The Federal Circuit concluded that the asserted claims use general-purpose processors to perform the steps of collecting, transmitting, receiving, and compiling users’ answers and matches. The Federal Circuit found “invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea.” SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (quoting Elec. Power, 830 F.3d at 1355). As such, use of databases and multiple processors do not add an inventive concept where the claims merely require “already available computers, with their already available basic functions, to use as tools in executing the claimed process.” SAP Am., 898 F.3d at 1169-70. Further, when looking at the additional elements of the claim in an ordered combination, the Federal Circuit found that the asserted claims are organized in an expected way – receiving user information, asking the user questions, receiving answers from the user, identifying and displaying a match based on the answers – thus concluding that no inventive concept is displayed. Thus, the asserted claims of the patents do not provide an inventive concept by virtue of their use of certain features and components, such as multiple processors, match servers, unique identifications, and/or a match aggregator.