Avoiding § 101 Eligibility Issues in Internet-Centric Method Claims
Before Stoll, Reyna, and Hughes, Appeal from the United States District Court for the Southern District of New York.
Summary: The specific implementation of an abstract idea, such as improving Internet functionality, can be a patent eligible concept.
Google moved to dismiss patent infringement claims brought by Sholem Weisner as claiming patent ineligible subject matter. All four asserted patents shared a specification. Two patents claimed methods for logging a mobile device user’s location data for use in optimizing a search (the “travel log patents”), while the two other patents claimed methods for using travel histories to improve search results (the “search optimization patents”). Although the District Court only analyzed the travel log patents under Alice’s two-part test, it dismissed both the travel log patents and the search optimization patents as patent ineligible.
On appeal, the Federal Circuit affirmed the District Court’s findings regarding the travel log patents. However, the Federal Circuit reversed the District Court’s determination of patent ineligibility regarding the search optimization patents. The Federal Circuit determined that the claims of the search optimization patents were directed to an abstract idea. However, the specific implementation of this abstract idea to solve a problem unique to the Internet transformed the claims into claiming eligible subject matter. Specifically, the implementation of physical travel history data from a “reference person” to prioritize search results, when conventional search ordering methodologies defaulted to using virtual visitation data to order search results, solved the Internet-specific problem of searches providing impersonal search results. The Federal Circuit likened the search optimization’s claims to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), which similarly solved an Internet-specific problem by overriding conventional Internet sequences with patented methodology.
Judge Hughes dissented, arguing that the claims recited routine and conventional algorithms for search engine optimization, thus leaving only the abstract idea of using location data to improve search results. Judge Hughes also argued the problem of search engine optimization is not particular to the Internet, since people in the past have used a reference person’s physical travel data for recommendations before, like asking friends which restaurants they have visited before.
Editor: Paul Stewart