“A patentee must do more than invoke a generic need for claim construction or discovery to avoid grant of a motion to dismiss under § 101.” – Federal Circuit
In a precedential decision authored by Judge Tiffany Cunningham on Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled that two patents for methods of connecting users based on their answers to polling questions were directed to patent ineligible subject matter under 35 U.S.C. § 101.
U.S. Patent Nos. 9,087,321 and 10,936,685 are owned by Trinity Info Media, LLC and are titled “Poll-Based Networking System.” The U.S. District court for the Central District of California granted Covalent, Inc.’s motion to dismiss under Rule 12(b)(6), finding that the claims were directed to the abstract idea of “matching users who gave corresponding answers to a question” and did not contain an inventive concept.
Trinity argued that the district court should have conducted claim construction and discovery before analyzing the claims under Section 101, but the CAFC disagreed and explained that “[a] patentee must do more than invoke a generic need for claim construction or discovery to avoid grant of a motion to dismiss under § 101.” Instead, said the court, the patent holder 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.”
Turning to the two-step Alice-Mayo test, the court next found that the claims were directed to the patent ineligible concept of “matching based on questioning” at step one, and rejected Trinity’s arguments that the patents claim an advance over the prior art because prior art inventions were not carried out on mobile phones; did not employ “multiple match servers”; and did not employ “match aggregator[s]”. “Even accepting these statements as true, the claims are directed to nothing more than performing the abstract idea of matching on a mobile phone,” said the court.
The CAFC said that Trinity’s claim that “humans could not mentally engage in the ‘same claimed process’ because they could not perform ‘nanosecond comparisons’ and aggregate ‘result values with huge numbers of polls and members,’ nor could they select criteria using ‘servers, storage, identifiers, and/or thresholds,’” was not “tethered to the asserted claims, which do not require ‘nanosecond comparisons’ or aggregating ‘huge numbers of polls and members.’”
Citing Electric Power Group. and ChargePoint, Inc. v. SemaConnect, Inc., the court also noted that it has held before that claims requiring “generic computer components” or “operations that a human could not perform as quickly as a computer” can still be directed to an abstract concept. Trinity’s reliance on generic computing terms like “data processing system,” “processors” and “memory” further doomed the claims, said the court, since they confirmed that the claims don’t require specialized computing components but, rather, “provide a generic technical environment for performing the abstract idea.”
Trinity’s argument that its “non-traditional design” that allowed for “rapid comparison and aggregation of result values even with large numbers of polls and members” should have been more thoroughly considered by the district court, but the CAFC said “[t]he use of a unique identifier does not prevent a claim from being directed to an abstract idea.”
At step two, the court said Trinity failed to adequately allege that the claims contained an inventive concept. Trinity’s “conclusory statements” about the prior art compared with the invention are not enough to demonstrate an inventive concept, said the court, and its arguments that conventional components used in an expected manner are enough to provide an inventive concept also failed. As to the argument that the use of a handheld device, use of a matching application, or that certain claims permit review of matches using swiping demonstrate an inventive concept, the court was also unpersuaded. “Just as a claim is not rendered patent eligible by stating an abstract idea and instructing ‘apply it on a computer,’ a claim is not rendered patent eligible merely because the abstract idea is applied on a handheld device or using a mobile application,” said the court.
Image Source: Deposit Photos
Image ID: 86267474