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Federal Circuit Affirms Western District Of Texas’s Order Granting Summary Judgment To Defendant Under § 101
09/06/2023USC IP Partnership, L.P. (“USC”) filed a patent infringement lawsuit against Facebook, Inc., succeeded by Meta Platforms, Inc. (collectively, “Meta”), in the United States District Court for the Western District of Texas. USC accused Meta’s “News Feed” feature of infringing U.S. Patent No. 8,645,300 (“the ’300 Patent”). The ’300 Patent claims a method for predicting which webpages to recommend to a web visitor based on inferences of the visitor’s intent by using an “intent engine.” Meta moved for summary judgment of invalidity of all claims of the ’300 Patent on the ground that they are ineligible for patenting, under 35 U.S.C. § 101. A week before trial was scheduled, Judge Alan Albright granted summary judgment. USC IP P’ship, L.P. v. Facebook, Inc., 576 F. Supp. 3d 446 (W.D. Tex. 2021) (“Dist. Ct. Order”).
Patent claims must be directed to patent-eligible subject matter. The Supreme Court of the United States proposed a two-step analytical process to clarify the boundary between an unpatentable idea and the patent-eligible application of the idea. See Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014). The first step is to determine whether the claims at issue are directed to an ineligible category such as an abstract idea. If so, the second step is to determine whether there is an inventive concept that amounts to significantly more than the ineligible concept itself. Id.
Applying the Alice step one analysis, Judge Albright found that the claims of the ’300 Patent “[were] directed to the abstract idea of collecting, analyzing and using intent data.” Dist. Ct. Order at 456 (internal citations omitted). Applying the Alice step two analysis, Judge Albright found that the claims do not “recite any elements, when considered individually or ‘as an ordered combination,’ [that] contain anything ‘significantly more’ than the abstract idea itself.” Id. at 456–57.
USC argued that the “intent engine” serves a role that is not conventional, generic, or well-known. USC’s expert opined that the claims present a “unique and novel way of delivering webpages to consumers that was not previously demonstrated in the prior art.” Id. at 457. However, the district court stated that the intent engine “is a purely functional ‘black box’ implemented using standard cloud platforms from well-known vendors,” and found the expert testimony conclusory. Id.
On August 30, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming Judge Alan Albright’s order and found that the district court’s analysis and conclusion conform to precedent.
Under Alice step one, the Federal Circuit held that the idea of using computers to predict visitors’ intents is insufficient to render the idea non-abstract. Rejecting USC’s comparison to DDR Holdings, LLC v. Hotels.com, L.P., the Federal Circuit reasoned that the claimed method in DDR Holdings overcame “a problem specifically arising in the realm of computer networks” and “necessarily rooted in computer technology.” 773 F3d 1245, 1248 (Fed. Cir. 2014). The claims of the ’300 Patent, on the other hand, are not directed to improvements in computer functionality. The claims use high-level functional language—processing the confirmed intent—with no limitation as to how “processing” steps are performed. Dist. Ct. Order at 455–56.
Turning to Alice step two, the Federal Circuit agreed with the district court that claims do not contain “significantly more” to remove the claims from generality and abstraction. The claim elements of the ’300 Patent were well known in the prior art and do not provide any inventive concept. Disregarding USC’s argument that the “intent ranking formula” in the specification provides sufficient substance for the operation of the “intent engine,” the Federal Circuit affirmed the district court finding that the intent engine is only “a purely functional ‘black box.’” Dist. Ct. Order at 457. The Federal Circuit reasoned that the claims are not directed to the use of the intent ranking formula nor do the claims cover the formula itself. In fact, the specification states that skilled artisans would know “many standard formulas” that would be effective. ’300 Patent col. 10 11. 25–27.
Last, the Federal Circuit agreed with the district court’s finding that there was no genuine dispute of material fact because USC’s expert provided merely conclusory statements that the claims present a “unique and novel way of delivering webpages to consumers that was not previously demonstrated in the prior art.” Dist. Ct. Order at 457.
