In Weisner v. Google LLC,1 the Federal Circuit held claims directed to mobile device location tracking contained an inventive concept that transformed the abstract idea of creating and using travel histories to improve computerized search results into a patent-eligible invention. The court reasoned that the claims recited a specific solution to the Internet-centric problem of web searches, enabling more personalized search results than conventional methods offer.
Sholem Weisner, a named inventor of U.S. Patent Nos. 10,394,905 and 10,642,911, sued Google LLC for patent infringement. The patents described ways that individuals and businesses could swap information. For example, individuals record entries in their travel history either by accepting a proposal from another person/business or by separately making their own entry. The specification also explained that the recorded travel history data could be used to improve web search results. For example, the system used a person’s search results to cross-reference digital histories of specific other persons to create a common visit and then gave priority to those search results.
The claims of the ’911 and ’905 patents recited using physical location histories to enhance electronic search results. For example, the preamble of claim 1 of the ’911 patent recited improving digital search results using uniform resource locators (URLs) of location histories. The claims also described gathering physical location histories but involved steps associated with electronic searches using the histories. Claim 1 of the ’911 patent recited:
1. A computer-implemented method of enhancing digital search results for a business in a target geographic area using URLs of location histories, comprising:
providing, by at least one processing system in communication with a positioning system, an account to (i) an individual member and (ii) a stationary vendor member, of a member network, the account associated with a URL, the individual member’s account associated with a mobile communication device or multiple mobile communication devices;
maintaining a communication link between the mobile communication device and the at least one processing system or the positioning system such that the mobile communication device is configured to accumulate a location history on a database maintained by the at least one processing system from physical encounters by the individual member at multiple stationary vendor members upon the mobile communication device being set to enter instances of a physical encounter between the individual member carrying the mobile communication device and the stationary vendor member at a physical premises of the stationary vendor member, the positioning system determining a location of the individual member at the physical premises;
for each individual member having a location history who sends a search query to a search engine of the at least one processing system, the search query targeting a geographic area:
(1) searching, by the search engine, the database for URLs of stationary vendor members in the location history, the location history also identifying time and geographic place of the physical encounters therein; and
(2) assigning a priority, by the at least one processing system, in a search result ranking based on an appearance of one of the stationary vendor member URLs in the location history of the individual member, wherein that one of the URLs is of a particular stationary vendor member located in the target geographic area.2
Claim 1 of the ’905 patent recited:
1. A method of combining enhanced computerized searching for a target business with use of humans as physical encounter links, comprising:
maintaining a processing system connected to a telecommunications network;
providing an application that allows a handheld mobile communication device of each individual member of a member network, the device in communication with a—positioning system, upon a physical encounter between the individual member and a stationary vendor member of a plurality of stationary vendor members of the member network at a physical premises of the stationary vendor member, to transmit key data of the stationary vendor member and of the individual member to the processing system automatically as a result of the physical encounter, a location of each individual member’s device determined by the positioning system, the key data being a URL or an identifier associated with the URL;
maintaining, using the processing system, a database of physical location histories of members of the member network whose key data was transmitted to the processing system during the physical encounters;
determining, by the processing system, a physical location relationship recorded in the database between a searching person who is a member of the member network, a reference individual member of the member network and a first stationary vendor member of the plurality of stationary vendor members, upon the searching person making a search query on a search engine having access to the processing system; and
responding to the search query by generating a computerized search result that increases a ranking of the first stationary vendor member based on the physical location relationship wherein the relationship is as follows:
(a) the reference individual member’s physical location history includes key data of the first stationary vendor member; and
(b) the searching person’s physical location history and the reference individual member’s physical location history each include key data of a second stationary vendor member of the plurality of stationary vendor members,
wherein the searching person’s physical location relationship to the first stationary vendor member is such that the searching person has a physical location relationship with the second stationary vendor member who has a physical location relationship with the reference individual member who has a physical location relationship with the first stationary vendor member.3
Google moved to dismiss Mr. Weisner’s Complaint, asserting that the patent claims were ineligible under 35 U.S.C. § 101. Mr. Weisner amended the Complaint and included specific information to support patent eligibility. Google again filed a motion to dismiss for lack of patent eligibility under § 101. The district court granted Google’s motion and dismissed the case because the patents lacked eligible subject matter. Mr. Weisner appealed, and the Federal Circuit reversed.
The court explained its test for eligibility:
Section 101 defines patent-eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court established a two-step test for examining patent eligibility under § 101 in Alice Corp. v. CLS Bank International. . . . Under step one, we determine whether the claims at issue are directed to . . . a patent-ineligible concept, such as an abstract idea. . . . Under step two, we 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.4
On appeal, the court decided that the contested claims of the ’905 and ’911 patents were not shown to be ineligible at the Rule 12(b)(6) pleadings stage, “where the court must accept all well-pleaded factual allegations as true and must construe all reasonable inferences in favor of Mr. Weisner.”5 Specifically, at step one of Alice, the court held that the district court failed to recognize that the claims of the ’905 and ’911 patents generated and utilized travel histories to enhance computerized search results. The court explained that the preamble to claim 1 of the ’911 patent recited a “method of enhancing digital search results for a business in a target geographic area using URLs of location histories.”6 Likewise, the preamble to claim 1 of the ’905 patent detailed a “method of combining enhanced computerized searching for a target business with use of humans as physical encounter links.”7 The remaining parts of the ’905 and ’911 patent claims also described using the location histories in digital searches. The court noted that the specification also reinforced the importance of using location histories in computerized searching as a unique concept to improve search results from simply aggregating location histories.
The court then held that the claims of the ’905 and ’911 patents were directed to an abstract idea but that based on the pleadings, the claims fulfilled step two of the Alice test. Specifically, the court explained that Mr. Weisner credibly asserted that the ’905 and ’911 patent claims covered a particular application of the abstract idea that alleges to resolve an Internet-specific problem, and therefore the claims should not have been held ineligible under step two of the Alice test at the pleading stage. According to the court:
we conclude that the claims’ specificity as to the mechanism through which they achieve improved search results (through a “location relationship” with a “reference individual” for the ’905 patent or through the “location history of the individual member” who is running the search in a targeted “geographic area” for the ’911 patent) is sufficient. Stated another way, disclosing a new search engine algorithm is not necessary as these claims do not per se concern searching for new information, but rather concern a new technique for prioritizing the results of the conventional search.8
The court explained that claim 1 of the ’905 patent reasonably recited a detailed procedure for using physical location history data to enhance the computerized search outcomes. Specifically, claim 1 included a physical location relationship with a third-party reference individual to improve the importance of search outcomes. Claim 1 recited how the physical relationship was generated by the system searching the physical location histories of both a reference individual and the searching individual to decide whether both individuals visited a mutual location. The system then ranked the search results that the reference individual visited.
The court explained that the invention, rather than being simply an abstract idea of enhancing a web search using location history, was a specific implementation of that concept.9 In addition, this specific implementation was also alleged to solve an Internet-centric problem. The second amended complaint (SAC) explained the search feature offered distinctively personalized results corresponding to the searcher’s specific characteristics and removed the bias of recommending locations via standard web searches. The SAC described that it was different from current methods in which web searches simply used the highest-ranking URL.
The court noted that the specification also highlighted that prior art web searches had the problem of returning too many generic, non-personalized search results.10 The court reasoned that accepting these factual allegations and all rational inferences as true at this early stage of the litigation, the claims of the ’905 patent included an inventive concept that was enough to defeat Google’s motion to dismiss. The court also noted that claim 1 of the ’911 patent was similar but specific to search queries directed to a geographic area. The court therefore held that the claims of the ’911 patent also embraced an inventive concept sufficient to survive an ineligibility decision at the pleadings stage.
The court explained that claims are patent eligible “when they provided a specific solution to an Internet-centric problem.”11 The court reasoned that the ’905 and ’911 patent claims “plausibly provide a solution to an Internet-centric problem regarding web searches, allowing for more personalized search results than conventional methods.”12
Thus, we conclude that claim 1 of the ’905 patent and claim 1 of the ’911 patent plausibly recite inventive concepts that add significantly more to the abstract idea of using travel histories to improve computerized search results.13
The court further noted that the ’905 and ’911 patent claims were reasonably directed to more than simply the idea of enhancing search results using travel histories. Rather, the claims add significantly more by executing a particular solution to a problem entrenched in computer technology. Therefore, the Federal Circuit reversed the district court’s determination that the ’905 and ’911 patent claims were not patent eligible.
Judge Hughes dissented, disagreeing with the majority’s analysis that the claims of the ’905 and ’911 patents recite inventive concepts:
Because the second amended complaint admits that the algorithms used to incorporate location data are routine and conventional, and because the claims do not solve a problem specific to the internet, I would affirm the district court’s determination that the claims of these two patents are ineligible.
Judge Hughes would have affirmed the district court’s holding that the claims of the ’905 and ’911 patents are ineligible.
Lessons for Patent Litigators and Prosecutors
This is another case in which the Federal Circuit reversed the district court for invalidating a software-related invention as abstract and not patent eligible.14 The court again used the specification as part of the analysis of whether the invention provided a technical improvement and/or whether the invention solved an Internet-centric problem. In this case, the invention provided a solution to the Internet-centric problem of creating and using travel histories to improve computerized search results by enabling more personalized search results than conventional methods offer. On the other hand, the mere automation or digitization of a conventional method of organizing human activity, such as the creation of a travel log on a computer, would be considered abstract and not patent eligible.
Applicants should strategically draft the patent specification to describe the technical improvement in a clear manner and in as many features/facets as possible. It may be beneficial for computer software application inventions to also provide the technical details of the invention that implements the computer functionality and the software architecture that provides the technical improvements. As mentioned previously, litigants can exploit these issues in connection with software eligibility to either buttress the patent eligibility/validity of the claimed invention or attack it.
Irah Donner is a partner in Manatt’s Intellectual Property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 Weisner v. Google LLC, 51 F.4th 1073, 2022 USPQ2d 946, 2022 WL 7265934 (Fed. Cir. 2022).
2 Id., 51 F.4th at 1079.
3 Id., 51 F.4th at 1079-80.
4 Id., 51 F.4th at 1081 (citing Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014)) (quotation marks omitted).
5 Id., 51 F.4th at 1084.
6 Id., 51 F.4th at 1084 (quoting ’911 patent col. 21 ll. 14-16).
7 Id., 51 F.4th at 1084 (quoting ’905 patent col. 21 ll. 15-17).
8 Id., 51 F.4th at 1085-86.
9 Id., 51 F.4th at 1086.
10 Id., 51 F.4th at 1086-87.
11 Id., 51 F.4th at 1087.
12 Id., 51 F.4th at 1087-88.
13 Id., 51 F.4th at 1088.
14 See, e.g., Improved Method for Overcoming Hacking by Turning On and Off Authentication Held Patent Eligible at https://www.manatt.com/insights/newsletters/intellectual-property-law/improved-method-for-overcoming-hacking-by-turning.