Patent-eligible subject matter is “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. But “[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)).

A two-step framework is applied to determine eligibility. See, e.g., Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77–80 (2012).

First, “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. A “telltale sign of abstraction” is when the claimed functions are “mental processes that ‘can be performed in the human mind' or ‘using a pencil and paper.'” PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310, 1316 (Fed. Cir. 2021), (quoting CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011)); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis . . . is all abstract.”).

Second, “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) (cleaned up). This second step has been described “as a search for an ‘inventive concept'—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'” Id. at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73).

“[T]ransformation into a patent-eligible application requires more than simply stating the abstract idea while adding the words ‘apply it.'” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72) (cleaned up). Where a claim is directed to an abstract idea, the claim must include “an ‘inventive concept' sufficient to ‘transform' the claimed abstract idea into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 72–73 (cleaned up)).

Poll-Based Networking

In Trinity Info Media, LLC v. Covalent, Inc., No. 2022-1308, — F.4th — (Fed. Cir. July 14, 2023), Trinity Info Media had sued Covalent for infringing two patents (U.S. Patent Nos. 9,087,321 and 10,936,685) covering a poll-based networking system that connects users based on a “likelihood of match” between users based upon their answers to certain questions.

Specifically, the claimed invention recited (1) receiving user information; (2) providing a polling question; (3) receiving and storing an answer; (4) comparing that answer to generate a “likelihood of match” with other users; and (5) displaying certain user profiles based on that likelihood.

The Federal Circuit found that collecting information, analyzing it, and then displaying certain results, is a “familiar” class of claims “directed to” a patent-ineligible concept. In this case, the abstract idea of matching based on questioning.

A human mind could review people's answers to questions and identify matches based on those answers.

That some claims further require that this be performed on a “hand-held device” or that matches are “reviewable by swiping” does nor render the claims patent-eligible. See, e.g., In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (“[A]lthough the claims limit the abstract idea to a particular environment—a mobile telephone system—that does not make the claims any less abstract for the step 1 analysis.”); see also ChargePoint, 920 F.3d at 766–67, 770 (adding networking capabilities to facilitate network communication did not prevent the claim from being directed to an abstract idea).

            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)) (cleaned up).

The Court found that the patent specifications framed the inventor's problem not in terms of how to improve computer technology, but in how to improve polling by comparing matching based on questioning. Furthermore, “the patents confirm they do not limit the invention to specific technological solutions.”

As for Alice/Mayo step two, the Court found that the alleged inventive concepts, such as matching users in real-time, merely reflect the improved speed inherent with applying the abstract idea using a computer. See 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) (cleaned up)); 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.”).

Nor do we see anything inventive in the ordered combination of elements. See TwoWay Media, 874 F.3d at 1341 (“The steps are organized in a completely conventional way—data are first processed, sent, and once sent, information about the transmission is recorded.”). So too here, the asserted claims are organized in an expected way—receiving user information, asking that user questions, receiving answers, identifying and displaying a match based on those answers.

* * *

We have “ruled many times” that “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., 898 F.3d at 1170 (quoting Elec. Power, 830 F.3d at 1355). Thus, we found no inventive concept where claims merely recited “generic features” or “routine functions” to implement the underlying abstract idea. Free Stream Media, 996 F.3d at 1366; see also PersonalWeb, 8 F.4th at 1316, 1318–19 (claims using “a generic hash function, a server system, or a computer” did not add “significantly more” to the abstract idea of using content-based identifiers to manage data). Similarly, in SAP America, we disagreed that claims using databases and multiple processors added an inventive concept where the claims merely required “already available computers, with their already available basic functions, to use as tools in executing the claimed process.” 898 F.3d at 1169–70.

Indeed, rather than focus on how to implement a distributed architecture, the patents-in-suit taught the use of “conventional” processors, a “conventional server computer system,” and Internet protocols that “are well known to those of skill in the art.” The Court found that such conventional components used in the expected manner do not provide an inventive concept.

Professor Crouch noted that, at oral arguments, the patentee's attorney had argued that a better framing of the invention would include a “unique identifier to the answer so that that answer can find its place in a new and novel array of match servers, rather than a single match server that would have to later be searched.” Unfortunately, these features were not actually required by the claims.

Also, the Court concluded that claim construction and discovery were not necessary here because the patentee did not 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. See Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017) (affirming dismissal based on § 101 where patentee “provided no proposed construction of any terms or proposed expert testimony that would change the § 101 analysis”); Simio, LLC v. FlexSim Software Prods., Inc., 983 F.3d 1353, 1365 (Fed. Cir. 2020) (“Simio has not explained how it might benefit from any particular term's construction under an Alice § 101 analysis”); Sanderling Mgmt. Ltd. v. Snap Inc., 65 F.4th 698, 706 (Fed. Cir. 2023) (“proposed amendment merely sought to add conclusory statements that the claimed steps were not well-known, routine, and conventional”).

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