Patent Eligibility: Distinguishing Collecting Information from Using Information

by Dennis Crouch

I’m often energized to examine a final decision that splits hairs–finding some statements in a patent legitimate and other people invalid.  My hope is that the explanation will genuinely get to the crux of the problems and help me to superior comprehend how the legislation is effective. I’m often upset, but the Federal Circuit’s latest conclusion in Weisner v. Google LLC, — F.4th — (Fed. Cir. 2022) does offer you some very good clues.  The primary end result below: Weisner’s claims directed towards amassing facts are abstract strategies those directed toward making use of the information and facts are patent suitable.  This outcome is constant with what we are seeing in biotech as properly: diagnostics get a thumbs down therapeutics get a thumbs up.

Weisner sued Google for patent infringement back again in 2020, asserting infringement of a family members of 4 patents. U.S. Patent Nos. 10,380,202, 10,642,910, 10,394,905 and 10,642,911.  But, Google gained the situation fairly immediately on a R.12(b)(6) motion to dismiss with a holding from the district court that the asserted claims are ineligible under 35 U.S.C. § 101 (summary concepts).  On attractiveness, a divided Federal Circuit has reversed-in-part, keeping that some of the claims are patent suitable due to the fact they implement “a unique answer to a problem rooted in personal computer technology.”  Alice Action 2.

Judge Stoll wrote the majority belief joined by Choose Reyna. Judge Hughes dissented, arguing that all the statements are invalid.

Weisner’s 4 patents are all part of the exact same household and all relate to means of recording a person’s bodily locale record in methods that correspond to certain transactions. In the image (Fig.3 earlier mentioned), you can see the dude interacting with a Macy’s tale machine. Dude’s cellular phone is configured to history the transaction together with the site background and force it to the cloud.  Dude is executing one thing related at Benson’s (Fig.4 underneath), but in that one he is entering the transaction aspects manually given that Benson’s is a Brooklyn institution and isn’t superior-tech like Macy’s.

The Federal Circuit divided the promises into two groups:

• Declare Set A: Accumulating locale histories for later use.
• Assert Established B: Accumulating the place history and also using hose histories to boost look for success (e.g., give various research outcomes if someone has been to a Brooklyn Benson’s prior to).

In the charm, the Federal Circuit agreed that all of the promises fail Alice action 1. In particular, the court identified that they have been all directed to the unpatentable strategy of “collecting facts on a user’s movements and site background and electronically recording that information.”  Fundamentally, this is an electronic vacation log that is effectively the exact same as what people have been undertaking for all of historical past.  As the district court wrote: “Humans have regularly retained data of a person’s place and travel in the kind of vacation logs, diaries, journals, and calendars, which compile details these types of as time and locale.” Weisner v. Google LLC, 551 F. Supp. 3d 334 (S.D.N.Y. 2021).  Weisner argued that the statements ended up constrained to retaining journey historical past of members only — a aspect that improves details integrity.  On charm while, the Federal Circuit turned down this declare as “attorney argument, unlinked to the criticism or the patent statements or specifications.”  Even while eligibility is a issue of regulation, it have to even now be based mostly upon anything much more than simply legal professional argument.

At move 2, the court also agreed that Assert Set A was not salvageable for the reason that the recited improvements are all just generically claimed factors.

But, Assert Established B is distinct. Very first, due to the fact Set B adds the search outcomes takes advantage of, the Federal Circuit found it to be a “much closer question” as to irrespective of whether they are directed to an summary plan.  In the end even though the courtroom concluded that the statements are directed to an summary strategy at Alice Stage 1.  I note listed here that the appellate courtroom did not use any actual investigation to come to a decision this concern other than seemingly legal professional judgely  argument.  Perhaps the courtroom ought to have checked the prior part of this really belief where it discounted mere lawyer argument on the exact subject.

At Alice Action 2, the court concluded that the claims recite a unique implementation that – at minimum at this stage – really should have survived a motion to dismiss due to the fact they “plausibly seize an inventive principle.  Here, the court notes that the inventive idea comes from tying searches to a 3rd celebration “reference individual” whose spot background is similar to the get together undertaking an world wide web look for. “The method then prioritizes search outcomes that the reference individual has visited.”  In its final decision, the Federal Circuit defined that this linkage is a lot more than merely “improving web research using locale heritage.” Somewhat, it is a certain implementation of that notion.

Choose Hughes wrote in dissent that the claimed lookup advancements are just like any old look for with the addition of new searchable information — area record.  The Stoll majority responds in a footnote that Choose Hughes viewpoint “misses the point” by discounting the relevance of prioritizing travel histories in the look for.  As I mentioned in the intro, this result matches a typical tactic that we are viewing in eligibility circumstances — it is much much easier to defend approaches of utilizing facts than it is to defend procedures of accumulating info.  In the use-scenario, the information and facts alone combined with some use will routinely be witnessed as an creative notion.  On the other hand, the courts have been considerably less ready to say that collecting details is patent eligible.

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The patents right here are co-owned by the inventors, Sholem Weisner and Schmuel Nemanov.   Weisner required to sue Google, but Nemanov refused.   Weisner went forward and sued Google and also joined Namanov as an involuntary occasion under FRCP 19(a).  See, AsymmetRx, Inv. v. Biocare Med., 582 F.3d 1314, 1322 (Fed. Cir. 2009)(“A patentee that does not voluntarily be part of an action prosecuted by its exceptional licensee can be joined as a defendant….”).   The arrangement among the two get-togethers is a bit attention-grabbing. Weisner owns 78% of the legal rights, and the parties agreed that he would regulate exploitation of the patent “and will not be undercut by a minority operator.” WeisnerNemanovAgreement. The two battled these difficulties in a parallel lawsuit in NY Condition Court docket. WEISNER, SHOLEM vs. NEMANOV, SHMUEL, Docket No. 502269/2020 (N.Y. Sup Ct. Jan 29, 2020).