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Patent Claims That “Do Nothing More Than Improve A User’s Experience” Are Abstract
01/23/2024On January 9, 2024, the United States Court of Appeals for the Federal Circuit affirmed a decision by the Western District of Washington, determining that claims in two of plaintiff’s patents were directed to ineligible subject matter under 35 U.S.C. § 101. IBM Corp. v. Zillow Group, Inc., No. 2022-1861 (Fed. Cir. Jan. 9, 2024). Plaintiff had asserted the patents, which claim methods and systems for improving how search results are displayed to users. Defendant moved to dismiss under Rule 12(b)(6). The district court found the claims constituted ineligible subject matter as they are directed to abstract ideas and lack an inventive concept. The Federal Circuit panel (Judges Prost, Hughes, and Stoll) agreed, stating that the claims “do not disclose any technical improvement to how computer applications are used.” Judge Stoll dissented in part, on the basis that plaintiff’s proposed construction of “user context vector” in the ’676 patent should have been addressed.
The Federal Circuit analyzed the patents under the two-step framework laid out by the Supreme Court in Alice and Mayo. Regarding U.S. Patent No. 6,778,193, the Federal Circuit agreed with the district court that the claims are directed to the abstract idea of improving a user’s experience while using a computer application, and do not disclose any technical improvement. At step two, the Federal Circuit also agreed that plaintiff’s inventiveness arguments do not relate to capability or functionality, but merely the user experience and satisfaction, and thus do not rescue the claims.
For U.S. Patent No. 6,785,676, the Federal Circuit affirmed that the claims are directed to an abstract idea at step one. Specifically, the Federal Circuit noted that the claims directed to receiving and annotating search results based on user context are “improving a user’s experience,” but have no “specific mechanism for doing so.” The Federal Circuit emphasized the results-oriented language of the claims, such as “receiving a resource response set of results,” “receiving a user context vector,” “mapping the user context vector,” and “controlling the presentation of the resource response set,” without any explanation for how these steps are conducted. The Federal Circuit agreed with the district court that the claims are “directed to the abstract idea of displaying and organizing information.” At step two, the Federal Circuit once again agreed with the district court that plaintiff had not plausibly alleged an inventive concept that would salvage the claims.
The Federal Circuit also considered plaintiff’s arguments that the district court improperly failed to accept IBM’s well-pleaded factual allegations. The Federal Circuit explained that district courts need not accept conclusory allegations of inventiveness. The Federal Circuit found that plaintiff’s inventiveness allegations in its complaint are not connected to the patent claims or specification, and therefore agreed with the district court that they are not sufficient to survive the pleading stage.
The Federal Circuit also addressed plaintiff’s allegation that the district court should have considered a claim construction dispute. Defendant had adopted plaintiff’s construction in its reply briefing, and the Federal Circuit held that there was no claim construction dispute for the district court to resolve. However, Judge Stoll wrote in dissent that defendant’s reply briefing below only addressed part of the claim construction issue and did not address the implications raised in the § 101 analysis. Thus, in Judge Stoll’s view, the district court erred by not analyzing or adopting plaintiff’s claims construction in its patent eligibility analysis.
The decision highlights the need for patentees to tie allegations of inventiveness to the patent claims and suggests that, at least with respect to software and user interface claims, something more than “improving a user’s experience” is needed for eligibility.
