Transcend Abstract Concepts: A Comprehensive Understanding of Patent Eligibility
By Babak Akhlaghi on July 28, 2023.
The Federal Circuit upheld a decision of the district court that claims directed to poll based networking system are not patent eligible. Trinity Info Media, LLC v. Covalent, Inc., Case No. 22-1308 (Fed. Cir. July 14, 2023) (Stoll, Bryson, Cunningham, JJ.)
Trinity filed a lawsuit against Covalent in February 2021, citing infringement of U.S. Patent No 9,087,321 (“the ‘321 patent”) and U.S. Patent No. 10,936,685 (“the ‘685 patent”), titled “Poll Based Networking System.” The ‘321 patent describes a networking system that connects users based on their similarities, determined through poll answering. The ‘685 patent is similar but includes progressive polling for ecommerce systems.
Covalent filed a motion to dismiss Trinity’s lawsuit, claiming that the asserted claims are invalid under 35 U.S.C. § 101. The district court sided with Covalent, stating that the asserted claims revolve around the abstract idea of matching users based on their answers to a question and lack any inventive concepts. The court further described the claims as utilizing generic computer components to perform functions at a faster pace than a human could, rather than improving computer functionality. Trinity appealed.
According to Section 101 of the Patent Act, patent-eligible subject matter includes any new and useful process, machine, manufacture, or composition of matter, as well as any new and useful improvements to these. However, there are exceptions. The Supreme Court has ruled that laws of nature, natural phenomena, and abstract ideas are not patentable. See, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). To determine whether a claim is patent-eligible, we follow a two-step framework established in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77–80 (2012), and further detailed in Alice. First, we determine if the claim is directed towards a patent-ineligible concept like an abstract idea. If so, then, we consider the elements of the claim individually and as a combination to see if they transform the nature of the claim into a patent-eligible application of the patent-ineligible concept. This analysis includes searching for an “inventive concept” that ensures the patent goes beyond the ineligible concept itself.
In the first step, the Federal Circuit agreed with the district court that the claims involve the abstract concept of matching through questioning. Trinity’s arguments against this conclusion were unpersuasive. When evaluating whether a claim is directed to a patent ineligible concept, we consider the advancement of the claim over prior art to determine if it falls into excluded subject matter. While the specification can provide insight, the focus should always be on the claim language when analyzing patent eligibility. Courts must determine the basic character of the subject matter without abstracting it to a point where the claims are guaranteed to be abstract. Furthermore, a clear indication of abstraction is when the claimed functions can be performed mentally or with simple tools like pen and paper.
The Court noted that it had held before that the concepts of “analyzing information by steps people go through in their minds” and “collecting information, including when limited to particular content” have been seen as abstract. The ‘321 patent’s independent claims 1 and 19 involve receiving user information, providing polling questions, storing answers, comparing answers to determine a “likelihood of match” with other users, and displaying user profiles based on that likelihood. These claims fall into the category of claims directed towards an abstract idea of collecting information, analyzing it, and displaying certain results. This aligns with the district court’s decision that the independent claims of both patents pertain to matching based on questioning, which is an abstract concept.
In the context of software-based inventions, the first step of the Alice/Mayo test often focuses on whether the claims emphasize a specific improvement in computer capabilities or if they merely use computers as tools for an abstract process. Here, the specifications of the patents confirm that the claimed inventions aim to use computers as tools for an abstract idea, rather than bringing about an improvement in computer capabilities. The specifications of the patents primarily discuss how to enhance existing polling systems through progressive polling, rather than addressing advancements in computer technology. They specifically highlight the details of receiving and comparing answers to generate matches, such as varying the questions asked, limiting the displayed matches, and calculating a match percentage or number. The patents repeatedly emphasize that the invention is not limited to specific technological solutions. These passages further support the notion that the inventor’s problem centered around performing the abstract idea of matching based on questioning, rather than improving computer technology.
Trinity argued that humans cannot engage in the same process as described in the claims because they cannot perform nanosecond comparisons, aggregate large numbers of polls and members, or select criteria using servers, storage, identifiers, and thresholds. However, the Court noted that these arguments are not relevant to the claims themselves, which do not require nanosecond comparisons or aggregating large numbers of polls and members. Trinity compared this case to others where patented inventions improved the functionality of a computer or network platform, but the generic computing terms used in the claims do not prove a specialized computing environment is required. In conclusion, the Court held that the asserted claims are indeed directed to the abstract idea of matching based on questioning.
In the Alice/Mayo step two analysis, we evaluate individual elements and their combination to determine if the additional elements transform the nature of the claim into a patent-eligible application. Simply stating an abstract idea and adding the words “apply it” is not sufficient for patent eligibility. If a claim is directed to an abstract idea, it must include an inventive concept that transforms the idea into a patent-eligible application.
Trinity argued that the district court disregarded allegations in its amended complaint stating that certain features of the asserted claims were not well-understood, routine, or conventional. For example, Trinity argued that the prior art did not include certain features, such as real-time matching, the use of match servers and a match aggregator, mobile device integration, swipeable match reviews, and a mobile application. Trinity claimed that these features demonstrate an advance and improvement over the general-purpose computer. It also asserted that a poll-based networking system that matches users in real-time is a significant advance over the existing art. However, the Court noted that these allegations alone are not enough to demonstrate an inventive concept. Merely stating that a feature improves computer operations is considered conclusory. Additionally, the Court noted that the fact that some of the claimed steps were not previously utilized in this field is insufficient to confer patent eligibility. In summary, the Court held that the asserted claims also fail the step two of Alice/Mayo test.
Therefore, the Court held the asserted claims are patent ineligible under § 101.
Practice Tips:
Tip 1: To effectively navigate a 101 challenge, it is crucial to present your strongest arguments upfront and succeed in the first step of the Alice test. Failing the first step greatly diminishes your chances of success in step two. One argument that can be helpful in passing step two, as outlined in the USPTO guidelines on patent eligibility, is to demonstrate that the claims include specific limitations that go beyond what is well-understood, routine, and conventional in the field. However, in this case, the Court dismissed this argument. While the Court acknowledged that some features of the claims are not found in prior art, it emphasized that the mere novelty of certain claimed steps is not enough to qualify for patent eligibility.
Tip 2: A clear indication of abstraction is when the claimed functions can be performed mentally or with simple tools like pen and paper. It is essential for practitioners to consider this aspect when drafting claims. If such abstraction is present, it is advisable to modify the claims by incorporating features that contradict this notion.
Tip 3: When dealing with software-based inventions, the initial element of the Alice/Mayo test typically examines whether the claims highlight a particular enhancement in computer abilities or if they simply utilize computers as tools for an abstract process. Thus, when drafting the claims, practitioners should emphasize the technical features and explain how the functionality is achieved from a technical perspective, rather than making broad functional statements. Additionally, in the specification, practitioners should refrain from using computers solely as a means to implement an abstract idea. Instead, focus on describing the technical issue and how computers are utilized from a technical standpoint to offer a specific technical solution to that problem.