51 F.4th 1073
Fed. Cir.2022Background
- Plaintiff Sholem Weisner (inventor) sued Google alleging infringement of four related patents (U.S. Pat. Nos. 10,380,202; 10,642,910; 10,394,905; 10,642,911) that share a common specification about digitally recording "physical location" ("leg"/travel histories) and using those histories to improve services.
- The patents separate into two groups: the ’202 and ’910 patents focus on creating/accumulating digital travel/location histories; the ’905 and ’911 patents focus on using those histories to enhance computerized/web search results (e.g., via a "reference individual" or geographically targeted queries).
- Google moved to dismiss under Rule 12(b)(6) on two grounds: failure to plausibly plead infringement and that the asserted claims are patent-ineligible under 35 U.S.C. § 101; the district court dismissed the SAC on § 101 grounds.
- At the Federal Circuit, the court applied the Alice two-step framework (is the claim directed to an abstract idea; if so, do the claim elements—individually or as an ordered combination—provide an "inventive concept" that transforms the claim into patent-eligible subject matter).
- The Federal Circuit affirmed dismissal as to the ’202 and ’910 patents (claims directed to the abstract idea of creating a digital travel log using generic components) but reversed as to the ’905 and ’911 patents, concluding those claims plausibly recite an inventive concept at the pleadings stage (specific internet-centric techniques to prioritize search results using travel histories).
Issues
| Issue | Weisner's Argument | Google’s Argument | Held |
|---|---|---|---|
| Whether claims of the ’202 and ’910 patents are § 101-eligible | Claims improve system functionality by automatically recording physical interactions and limiting recordings to network "members," thus not abstract | Claims are directed to the abstract idea of creating/digitizing travel logs and merely recite generic computer components | Held ineligible — affirmed (claims directed to digitizing conventional travel logs using generic technology; no inventive concept) |
| Whether claims of the ’905 and ’911 patents are § 101-eligible | Claims recite specific implementations (e.g., using a "reference individual" relationship or searching the searching-user’s location history within a target geographic area) that solve an Internet-centric problem of non-personalized search results | Claims merely add location-history data to conventional search algorithms and thus recite an abstract idea implemented with routine, conventional steps | Held not resolved against plaintiff at pleading stage — reversed (claims plausibly recite an inventive concept; survive 12(b)(6)) |
| Whether disclosing that the search algorithm is "conventional" is dispositive at step two | Alleged specificity in how travel histories are used (not the search algorithm itself) supplies the inventive concept | Admission/specification statements that algorithmic techniques are conventional show no inventive concept | Held: Concessions that search engines are conventional do not automatically defeat claims if the complaint/specification plausibly alleges a specific, internet-rooted implementation for prioritizing results |
| Whether the district court properly resolved § 101 on the pleadings | SAC alleges specific implementation details and Internet-centric problem/solution; factual inferences should be credited | § 101 can be decided at the pleadings when no factual disputes exist; district court did so | Held: § 101 dismissal affirmed for ’202/’910 but reversal for ’905/’911 — pleads were sufficient for the latter to survive 12(b)(6) and require development of factual record |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) (establishes two-step test for § 101 abstract-idea analysis)
- Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66 (2012) (framework on inventive concept and limits of applying laws/ideas)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (fact questions can preclude § 101 dismissal where factual allegations bear on conventionality)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (claims that solve an Internet-centric problem via a specific computer-based solution can be § 101-eligible)
- Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018) (§ 101 can be decided on the pleadings when no factual disputes preclude resolution)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (claims that improve computer functioning itself may not be abstract)
- Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017) (mere automation of manual processes using generic computers is not inventive)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014) (data collection/recognition/storage concepts are well-known and abstract)
- Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) (at pleading stage, courts must accept well-pleaded factual allegations and reasonable inferences when assessing § 101)