Federal Circuit Affirms Alice Nix of Poll-Based Networking System
| August 10, 2023
Trinity Info Media v Covalent, Inc.
Decided: July 14, 2023
Before Stoll, Bryson and Cunningham.
Summary:
The Federal Circuit affirmed patent ineligibility of the Trinity’s poll-based networking system under Alice. The claims are directed to the abstract idea of matching based on questioning, something that a human can do. The additional features of a data processing system, computer system, web server, processor(s), memory, hand-held device, mobile phone, etc. are all generic components providing a technical environment for performing the abstract idea and do not detract from the focus of the claims being on the abstract idea. The specification also does not support a finding that the claims are directed to a technological improvement in computers, mobile phones, computer systems, etc.
Procedural History:
Trinity sued Covalent for infringing US Patent Nos. 9,087,321 and 10,936,685 in 2021. The district court granted Covalent’s 12(b)(6) motion to dismiss, concluding that the asserted claims are not patent eligible subject matter under 35 USC §101. Trinity appealed.
Decision:
Representative claim 1 from the ‘321 patent is as follows:
A poll-based networking system, comprising:
a data processing system having one or more processors and a memory, the memory being specifically encoded with instructions such that when executed, the instructions cause the one or more processors to perform operations of:
receiving user information from a user to generate a unique user profile for the user;
providing the user a first polling question, the first polling question having a finite set of answers and a unique identification;
receiving and storing a selected answer for the first polling question;
comparing the selected answer against the selected answers of other users, based on the unique identification, to generate a likelihood of match between the user and each of the other users; and
displaying to the user the user profiles of other users that have a likelihood of match within a predetermined threshold.
Representative claim 2 from the ‘685 patent is as follows:
A computer-implemented method for creating a poll-based network, the method comprising an act of causing one or more processors having an associated memory specifically encoded with computer executable instruction means to execute the instruction means to cause the one or more processors to collectively perform operations of:
receiving user information from a user to generate a unique user profile for the user;
providing the user one or more polling questions, the one or more polling ques-tions having a finite set of answers and a unique identification;
receiving and storing a selected answer for the one or more polling questions;
comparing the selected answer against the selected answers of other users, based on the unique identification, to generate a likelihood of match between the user and each of the other users;
causing to be displayed to the user other users, that have a likelihood of match within a predetermined threshold;
wherein one or more of the operations are carried out on a hand-held device; and
wherein two or more results based on the likelihood of match are displayed in a list reviewable by swiping from one result to another.
Looking at the claims first, the claimed functions of (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 are all merely collecting information, analyzing it, and displaying certain results which fall in the “familiar class of claims ‘directed to’ a patent ineligible concept,” which a human mind could perform. The court agreed with the district court’s finding that these claims are directed to an abstract idea of matching based on questioning.
The ‘685 patent adds the further function of reviewing matches using swiping and a handheld device. These features did not alter the court’s decision. The dependent claims also added other functional variations, such as performing matching based on gender, varying the number of questions asked, displaying other users’ answers, etc. These are all trivial variations that are themselves abstract ideas. The further recitation of the hand-held device, processors, web servers, database, and a “match aggregator” did not change the “focus” of the asserted claims. Instead, such generic computer components were merely limitations to a particular environment, which did not make the claims any less abstract for the Alice/Mayo Step 1.
With regard to software-based inventions, the Alice/Mayo Step 1 inquiry “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 addressing this, the court looks at the specification’s description of the “problem facing the inventor.” Here, the specification framed the inventor’s problem as how to improve existing polling systems, not how to improve computer technology. As such, the specification confirms that the invention is not directed to specific technological solutions, but rather, is directed to how to perform the abstract idea of matching based on progressive polling.
Under Alice/Mayo Step 2, the claimed use of general-purpose processors, match servers, unique identifications and/or a match aggregator is merely to implement the underlying abstract idea. The specification describes use of “conventional” processors, web servers, the Internet, etc. The court has “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.” And, no inventive concept is found where claims merely recite “generic features” or “routine functions” to implement an underlying abstract idea.
Trinity’s Argument 1
Claim construction and fact discovery was necessary, but not done, before analyzing the asserted claims under §101.
Federal Circuit’s Response 1
“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, the patentee 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.”
Trinity’s Argument 2
Under Alice/Mayo Step One, the claims included an “advance over the prior art” because the prior art did not carry out matching on mobile phones, did not employ “multiple match servers” and did not employ “match aggregators.”
Federal Circuit’s Response 2
A claim to a “new” abstract idea is still an abstract idea.
Trinity’s Argument 3
Humans cannot mentally engage in the claimed process because humans could not perform “nanosecond comparisons” and aggregate “result values with huge numbers of polls and members” nor could humans select criteria using “servers, storage, identifiers, and/or thresholds.”
Federal Circuit’s Response 3
The asserted claims do not require “nanosecond comparisons” nor “huge numbers of polls and members.”
Trinity’s claims can be directed to an abstract idea even if the claims require generic computer components or require operations that a human cannot perform as quickly as a computer. Compare, for example, with Electric Power Group, where the court held the claims to be directed to an abstract idea even though a human could not detect events on an interconnected electric power grid in real time over a wide area and automatically analyze the events on that grid. Likewise, in ChargePoint (electric car charging network system), claims directed to enabling “communication over a network” were abstract ideas even though a human could not communicate over a computer network without the use of a computer.
Trinity’s Argument 4
Claims are eligible inventions directed to improvements to the functionality of a computer or to a network platform itself.
Federal Circuit’s Response 4
As described in the specification, mere generic computer components, e.g., a conventional computer system, server, web server, data processing system, processors, memory, mobile phones, mobile apps, are used. Such generic computer components merely provide a generic technical environment for performing an abstract idea. The specification does not describe the invention of swiping or improving on mobile phones. Indeed, the ‘685 patent describes the “advent of the internet and mobile phones” as allowing the establishment of a “plethora” or “mobile apps.” As such, “the specification does not support a finding that the claims are directed to a technological improvement in computer or mobile phone functionality.”
Trinity’s Argument 5
The district court failed to properly consider the comparison of selected answers against other uses “based on the unique identification” which was a “non-traditional design” that allowed for “rapid comparison and aggregation of result values even with large numbers of polls and members.”
Federal Circuit’s Response 5
Use of a “unique identifier” does not render an abstract idea any less abstract.
On the other hand, the “non-traditional design” appears to be based on use of an “in-memory, two-dimensional array” that “provides for linear speed across multiple match servers” and permits “an immediate comparison to determine if the user had the same answer to that of another user.” However, the asserted claims do not require any such in-memory, two-dimensional array.
Trinity’s Argument 6
The district court failed to properly consider the generation of a likelihood of a match “within a predetermined threshold.” Without this consideration, “there would be no limit or logic associated with the volume or type of results a user would receive.”
Federal Circuit’s Response 6
This merely addresses the kind of data analysis that the abstract idea of matching would include, namely how many answers should be the same before declaring a match. This does not change the focus of the claimed invention from the abstract idea of matching based on questioning.
Trinity’s Argument 7
There is an inventive concept under Alice/Mayo Step 2 because the claims recite steps performed in a “non-traditional system” that can “rapidly connect multiple users using progressive polling that compare[s] answers in real time based on their unique identification (ID) (and in the case of the ’685 patent employ swiping)” which “represents a significant advance over the art.”
Federal Circuit’s Response 7
These conclusory assertions are insufficient to demonstrate an inventive concept. “We disregard conclusory statements when evaluating a complaint under Rule 12(b)(6).”
Takeaways:
The evisceration of software-related inventions as abstract ideas continues. Although the court looks at the “claimed advance over the prior art” in assessing the “directed to” inquiry under Alice Step 1, conclusory assertions of advances over the prior art are insufficient to demonstrate inventive concept under Alice Step 2, at least for a 12(b)(6) motion to dismiss. It remains to be seen what type of description of an “advance over the prior art” would not be “conclusory” and satisfy the “significantly more” inquiry to be an inventive concept under Alice Step 2.
The one glimmer of hope for the patentee might have been the use of an “in-memory, two-dimensional array” that “provides for linear speed across multiple match servers.” An example of patent eligibility based on use of such logical structures can be found in Enfish. However, if the specification does not describe this use of an in-memory two-dimensional array and the “technological” improvement resulting therefrom to be the “focus” of the invention, even this feature might not be enough to survive § 101.
