DC ineligibility findings for computer-related claims affirmed-in-part and reversed-in part as some showed improvement of “a problem unique to the Internet”

Shalon Weisner and Shmuel Nemanov v. Google LLC

Docket No. 2021-2228 (IPR2020-00040) (https://cafc.uscourts.gov/opinions-orders/21-2228.OPINION.10-13-2022_2017814.pdf)

REYNA, HUGHES, STOLL

October 13, 2022

Brief Summary:   DC decisions on patent ineligibility claims affirmed-in-part and reversed-in-part as two of the patents arguably “recite a specific implementation of the abstract idea that purports to solve a problem unique to the Internet” (citing, DDR Holdings, FC 2014). Summary:  Mr. Weisner appealed from DC dismissal of his patent infringement suit against Google after finding all of the asserted claims of US 10,380,202; 10,642,910; and 10,394,905; and 10,642,911 that share a common specification ineligible under 35 USC 101.  The FC panel opinion explains that the disputed patents “describe[] a way in which individuals and businesses can sign up for a system so that they can exchange information, for instance ‘a URL or an electronic business card’” and “[t]hen, as individuals go about their day, they may encounter people or businesses that they want recorded in their ‘leg history,’ which records the URLs or business cards along with the time and place of the encounters” (“method of creating and/or using physical location histories”, “accumulation of physical location histories”, “computer-implemented method of enhancing digital search results for a business in a target geographic area using URLs of location histories”, “method of combining enhances computerized searching for a target business with use of humans as physical encounter links”)  The DC granted Google’s motion to dismiss because the claims are ineligible under 35 USC 101 and the complaint “failed to meet the minimum threshold for plausibly pleading his claim of patent infringement under Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).”  Mr. Weisner amended his complaint to added allegations regarding infringement and patent eligibility but the DC granted Google’s second motion to dismiss.  The FC reviewed the DC decisions as the ‘202 (“method of creating and/or using physical location histories”) and ‘910 (similar to ‘202 claims) patents separately from the ’905 (“computer-implemented method of enhancing digital search results”) and ‘911 claims (“method for combining enhanced computerized searching”).  The FC panel reviewed the patent eligibility determination process under Alice (US 2014 (step one:  “‘whether the claims at issue are directed to . . . [a] patent-ineligible concept[,]’ such as an abstract idea”; 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…a search for an ‘inventive concept’”).  The FC panel agreed with the DC that the ‘202 and ‘905 claims “are directed to an abstract idea” (“creating a digital travel log”, “a generic process for achieving the goal”, “mere automation of manual processes” (Content Extraction, FC 2014)).  It also agreed with the DC on step two relying “on statements in the specification and concessions by the patentee to conclude that the claims…do not ‘focus on a specific means or method that improves the relevant technology’” (Apple, FC 2016; the “components and features are conventional, not inventive concepts in the patents”).  The FC panel disagreed regarding the ’905 and ‘911 patents as the DC should have viewed the plead allegations and reasonable inferences in Mr. Weisner’s favor and did not (e.g., considering the patents together while the step one analyses may be different, Mr. Weisner plausibly alleged the “patent claims recite a specific implementation of the abstract idea that purports to solve a problem unique to the Internet” (citing, DDR Holdings, FC 2014).