In Trinity Info Media, LLC v. Covalent, Inc., the Federal Circuit affirms the district court’s dismissal of Trinity’s patent infringement lawsuit against Covalent. 72 F. 4th 1355. The court found that Trinity’s patents, which relate to methods and systems for connecting users based on their answers to polling questions, claim an abstract idea without an inventive concept and are invalid under 35 U.S.C. § 101.
The court applied the two-step framework of Alice/Mayo to analyze the patent eligibility of the asserted claims. At step one, the court found that the claims are directed to the abstract idea of matching based on questioning, which can be performed by a human mind or using a pencil and paper. At step two, the court found that the claims do not contain any additional elements that transform the abstract idea into a patent-eligible application, such as improving computer functionality or providing a technological solution.Trinity argued that the claims were not directed to an abstract idea because they involved unique identifiers, match servers, match aggregators, and swiping, and that the claims contained an inventive concept because they used multiple processors, handheld devices, and mobile applications. The court rejected Trinity’s arguments that the district court needed to conduct claim construction and fact discovery. The court concluded that the asserted claims are patent ineligible under § 101.
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Section 101 of the Patent Act 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 has long held that there is an "implicit exception" in § 101—"[l]aws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 133 S.Ct. 2107, 186 L.Ed.2d 124 (2013)). ["We review the district court's ultimate patent-eligibility conclusion de novo." (citation omitted.)] To do so, we apply the two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77-80, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012), and further detailed in Alice. At step one, we "determine whether the claims at issue are directed to one of those patent-ineligible concepts" such as an abstract idea. Alice, 573 U.S. at 217, 134 S.Ct. 2347. At 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." Id. (quoting Mayo, 566 U.S. at 78-79, 132 S.Ct. 1289) (cleaned up). "We have described step two of this analysis as a search for an 'inventive concept'—i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'" Id. at 217-18, 134 S.Ct. 2347 (brackets in original) (quoting Mayo, 566 U.S. at 72-73, 132 S.Ct. 1289).
A. Alice/Mayo Step One
We must first determine whether the asserted claims are directed to a patent-ineligible concept, such as an abstract idea. We conclude that they are directed to the abstract idea of matching based on questioning. We find Trinity's arguments to the contrary unpersuasive.
i.
To determine whether a claim is "directed to" a patent ineligible concept, we evaluate "the focus of the claimed advance over the prior art to determine if the claim's character as a whole is directed to excluded subject matter." PersonalWeb, 8 F.4th at 1315 (quoting Intell. Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017)) (cleaned up). "[W]hile the specification may help illuminate the true focus of a claim, when analyzing patent eligibility, reliance on the specification must always yield to the claim language in identifying that focus." Charge-Point, Inc. v. SemaConnect, Inc., 920 F.3d 759, 766 (Fed. Cir. 2019).
Courts must ascertain the "basic character of the [claimed] subject matter" without describing the claims at "such a high level of abstraction and untethered from the language of the claims" that the claims would be virtually guaranteed to be abstract. Compare Internet Pats. Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (agreeing "character" of claims was abstract idea of "retaining information in the navigation of online forms"), with Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337-39 (Fed. Cir. 2016) (finding claims directed to self-referential database table were not directed to an abstract idea); see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (concluding "focus of the asserted claims" was on "collecting information, analyzing it, and displaying certain results of the collection and analysis").
A "telltale sign of abstraction" is when the claimed functions are "mental processes that 'can be performed in the human mind' or 'using a pencil and paper.'" Personal-Web, 8 F.4th at 1316 (quoting CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011)). We have previously found "analyzing information by steps people go through in their minds" and "collecting information, including when limited to particular content" to be abstract. Elec. Power, 830 F.3d at 1353-54 ("[M]erely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis."); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis ... is all abstract.").
The '685 patent's requirements that the abstract idea be performed on a "hand-held device" or that matches are "reviewable by swiping" does not alter our conclusion that the focus of the asserted claims remains directed to an abstract idea. See, e.g., In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) ("[A]lthough the claims limit the abstract idea to a particular environment—a mobile telephone system—that does not make the claims any less abstract for the step 1 analysis."). Nor are we persuaded that dependent claim 8 of the '321 patent—further requiring processors configured to perform operations with web servers, a database, and a match aggregator— changes the focus of the asserted claims. See id.; see also Charge-Point, 920 F.3d at 766-67, 770 (adding networking capabilities to facilitate network communication did not prevent the claim from being directed to an abstract idea); Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1333, 1337-40 (Fed. Cir. 2017) (finding claims involving "improved scalable architecture for delivering real-time information" invalid under § 101). And the remaining dependent claims merely add trivial variations of the abstract idea—performing matches based on gender, varying the number of questions asked, and/or displaying other users' answers —that do not change the focus of the asserted claims. Decision at 783-86; '321 patent claims 2-3, 20; '685 patent claims 12-14, 16-17, 20-22, 24-25.
In the context of software-based inventions, Alice/Mayo step one "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 re Killian, 45 F.4th 1373, 1382 (Fed. Cir. 2022) (quoting Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018)) (cleaned up). The patents' specifications confirm that the asserted claims are directed to an abstract idea that merely seeks to use computers as a tool, not on an improvement in computer capabilities. See Charge-Point, 920 F.3d at 767-68 (relying on "problem facing the inventor" defined in the patent specification as part of the analysis to confirm claims were "directed to" abstract idea); see also TLI Commc'ns, 823 F.3d at 612 (finding inventor's "problem" was not "how to combine a camera with a cellular telephone" or "how to transmit images via a cellular network," but "recording, administration and archiving of digital images simply, fast and in such way that the information therefore may be easily tracked") (cleaned up).
The specifications frame the inventor's problem in terms of how to improve existing polling systems by performing progressive polling, not how to improve computer technology. '321 patent col. 1 ll. 35-56; see also '685 patent col. 1 l. 46 to col. 2 l. 7 (minor differences). In describing the invention, the specifications focus on the details of receiving and comparing answers to generate matches—varying the questions asked, limiting the number of matches displayed, and generating a "match percentage" or "match number." '321 patent col. 5 l. 53 to col. 6 l. 52; '685 patent col. 6 l. 33 to col. 8 l. 37. Repeatedly, the patents confirm they do not limit the invention to specific technological solutions. '321 patent col. 4 ll. 2-4 ("[T]he present invention may be practiced without necessarily being limited to these specific details."), col. 6 ll. 30-31 ("[T]here are numerous techniques for determining a likelihood of match...."), col. 8 ll. 51-53 ("The physical connections of the Internet and the protocols and communication procedures of the Internet are well known to those of skill in the art."); see also '685 patent col. 4 ll. 40-43, col. 8 ll. 4-7, col. 10 ll. 41-44. These passages confirm that the problem facing the inventor was how to perform the abstract idea of matching based on questioning, not an improvement to computer technology.
ii.
Next, we consider—and reject—several arguments raised by Trinity as to why its claims are not directed to an abstract idea.
Trinity argues that the district court's analysis at Alice/Mayo step one failed to appreciate several statements in its amended complaint demonstrating that the patents included an advance over the prior art. Appellant's Br. 25 (prior art did not carry out matching on mobile phone), 26 (prior art did not employ "multiple match servers"), 27 (prior art did not employ "match aggregator[s]"). These statements do not change our analysis at Alice/Mayo step one. Even accepting these statements as true, the claims are directed to nothing more than performing the abstract idea of matching on a mobile phone. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("[A] claim for a new abstract idea is still an abstract idea."). Our focus is on the claims, as informed by the specification. See, e.g., ChargePoint, 920 F.3d at 766.
Trinity also argues that humans could not mentally engage in the "same claimed process" because they could not perform "nanosecond comparisons" and aggregate "result values with huge numbers of polls and members," nor could they select criteria using "servers, storage, identifiers, and/or thresholds." Appellant's Br. 31. Notably, Trinity's arguments are not tethered to the asserted claims, which do not require "nanosecond comparisons" or aggregating "huge numbers of polls and members." See, e.g., '321 patent claims 1 and 8; see, e.g., '685 patent claim 2. Moreover, although a human could not "detect[] events on an interconnected electric power grid in real time over a wide area and automatically analyz[e] the events on the interconnected electric power grid," we nevertheless found such claims to be directed to an abstract idea in Electric Power Group. 830 F.3d at 1351, 1353-54. Similarly, a human could not communicate over a computer network without the use of a computer, yet we held that claims directed to enabling "communication over a network" were focused on an abstract idea in ChargePoint. 920 F.3d at 766-67. Likewise, Trinity's asserted claims can be directed to an abstract idea even if the claims require generic computer components or require operations that a human could not perform as quickly as a computer.
Trinity compares this case to other decisions where we found the patented invention to be directed to improvements to the functionality of a computer or network platform itself. Appellant's Br. 30-31. But Trinity relies on generic computing terms—e.g., "data processing system," "processors," "memory"—that provide a generic technical environment for performing the abstract idea. See TLI Commc'ns, 823 F.3d at 611 (noting that "telephone unit" and "server" "merely provide a generic environment in which to carry out the abstract idea"). Both patents-in-suit confirm the asserted claims do not require specialized computing components. '321 patent col. 9 ll. 56-59 ("The computer system may be a conventional computer system that can be used as a member computer system or a server computer system or as a web server computer system."), col. 10 ll. 10-12 (conventional microprocessor), col. 10 ll. 13-15 (memory can be dynamic random access memory (DRAM) or static ram (SRAM)); see also '685 patent col. 10 ll. 49-52, col. 12 ll. 4-9. The '685 patent teaches that the "advent of the internet and mobile phones" allowed the establishment of a "plethora" of "mobile apps." '685 patent col. 1 ll. 27-29. The '685 patent also does not purport to have invented swiping or to improve on that process. See, e.g., Charge-Point, 920 F.3d at 768 (reviewing specification for "what it states and what it does not") (emphasis added)). In other words, the specification does not support a finding that the claims are directed to a technological improvement in computer or mobile phone functionality.
Trinity further argues the district court failed to adequately consider comparing a selected answer against other users "based on the unique identification," which Trinity asserts was a "non-traditional design" that allowed for "rapid comparison and aggregation of result values even with large numbers of polls and members." Appellant's Br. 27. We disagree. The use of a unique identifier does not prevent a claim from being directed to an abstract idea. Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017) ("The fact that an identifier can be used to make a process more efficient, however, does not necessarily render an abstract idea less abstract."). Nor are we persuaded that the purported "non-traditional design" makes the asserted claims not directed to an abstract idea. See Appellant's Br. 27. Trinity points to 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." Id. While dependent claim 7 of the '321 patent requires an "in memory, two-dimensional array," the asserted claims do not. See, e.g., '321 patent claim 8.
Trinity also points to the use of "match servers" and "a match aggregator" to identify matches. Appellant's Br. 26-27. Of the asserted claims, only dependent claim 8 of the '321 patent requires that processors be configured to perform operations involving a "match aggregator" and "web server" and storing "answers in a database." '321 patent claim 8. As discussed above, these components merely place the abstract idea in the context of a distributed networking system, which in the context of the claimed invention as described in the specification does not change the focus of the asserted claims from an abstract idea.
Finally, Trinity argues that the district court omitted the limitation of generating a likelihood of match "within a predetermined threshold," without which "there would be no limit or logic associated with the volume or type of results a user would receive." Appellant's Br. 28. We are not convinced that this limitation changes the focus of the claimed invention to something other than the abstract idea of matching based on questioning. Indeed, this limitation merely reflects the kind of data analysis that the abstract idea of matching necessarily includes (e.g., how many answers should be the same before declaring a match).
In conclusion, the asserted claims are directed to the abstract idea of matching based on questioning.
B. Alice/Mayo Step Two
At Alice/Mayo step two, we "consider the elements of [the] 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." Alice, 573 U.S. at 217, 134 S.Ct. 2347 (quoting Mayo, 566 U.S. at 79, 78, 132 S.Ct. 1289). "[T]ransformation into a patent-eligible application requires more than simply stating the abstract idea while adding the words 'apply it.'" Id. at 221, 134 S.Ct. 2347 (quoting Mayo, 566 U.S. at 72, 132 S.Ct. 1289) (cleaned up). Where a claim is directed to an abstract idea, the claim must include "an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 72-73, 132 S.Ct. 1289 (cleaned up)).
Trinity argues that the district court failed to consider allegations in its amended complaint that several features of the asserted claims were not "well-understood, routine or conventional." Appellant's Br. 32; see also J.A. 78 (Amended Complaint) ¶ 32 (listing features purportedly not present in the prior art). Taken as an ordered combination, Trinity argues claim 1 of the '321 patent and claim 2 of the '685 patent contain an inventive concept because they 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)." Appellant's Br. 33. Trinity also argues that dependent claims 2, 3, 8, and 19 of the '321 patent contain an inventive concept because they specify matching based on "all polls the user previously answered (based on unique identifications)" and include hardware components, "including a server, a database, a match aggregator and a plurality of match servers." Appellant's Br. 34-35. We disagree.
Trinity's amended complaint fails to adequately allege that the asserted claims contain inventive concepts such that they survive a § 101 motion. See Simio, 983 F.3d at 1365 ("We disregard conclusory statements when evaluating a complaint under Rule 12(b)(6)."). For example, Trinity's amended complaint states that "the prior art did not include, alone or in any combination" certain features, including (1) real-time matching based on progressive polling, (2) using match servers and a match aggregator, (3) using a mobile device, (4) displaying matches reviewable by swiping, and (5) using a mobile application. J.A. 78 (¶ 32). This conclusion follows several paragraphs that allege the present invention "includes an advance over the prior art and an improvement over a general-purpose computer" because it uses certain features. J.A. 78 (¶ 29) (describing "carrying out one or more operations ... on a handheld device"); J.A. 78 (¶ 30) (same for "swiping"); J.A. 78 (¶ 31) (same for mobile application). Trinity also alleged that a poll-based networking system matching users in real-time "represents a significant advance over the art." J.A. 77 (¶ 27). These conclusory allegations that the prior art lacked elements of the asserted claims are insufficient to demonstrate an inventive concept. See Simio, 983 F.3d at 1365 ("A statement that a feature 'improves the functioning and operations of the computer' is, by itself, conclusory."); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) ("That some of the eleven steps were not previously employed in this art is not enough— standing alone—to confer patent eligibility upon the claims at issue.").
Whether viewing the claim limitations individually or as an ordered combination, the asserted claims do not add an inventive concept that would be "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Alice, 573 U.S. at 217-18, 134 S.Ct. 2347 (quoting Mayo, 566 U.S. at 72-73, 132 S.Ct. 1289). Trinity's arguments as to inventiveness merely reflect the improved speed inherent with applying the abstract idea using a computer. See Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) ("[C]laiming the improved speed or efficiency inherent with applying the abstract idea on a computer [is] insufficient to render the claims patent eligible as an improvement to computer functionality." (citation omitted) (cleaned up)); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible."). Nor do we see anything inventive in the ordered combination of elements. See Two-Way Media, 874 F.3d at 1341 ("The steps are organized in a completely conventional way—data are first processed, sent, and once sent, information about the transmission is recorded."). So too here, the asserted claims are organized in an expected way—receiving user information, asking that user questions, receiving answers, identifying and displaying a match based on those answers.
We are also not persuaded by Trinity's argument that the asserted claims include an inventive concept because they use "multiple processors, match servers, unique identifications and/or a match aggregator." Appellant's Br. 32. Again, we note that of the asserted claims, many of these features are specific to dependent claim 8. See '321 patent claim 8. We have "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." SAP Am., 898 F.3d at 1170 (quoting Elec. Power, 830 F.3d at 1355). Thus, we found no inventive concept where claims merely recited "generic features" or "routine functions" to implement the underlying abstract idea. Free Stream Media, 996 F.3d at 1366; see also PersonalWeb, 8 F.4th at 1316, 1318-19 (claims using "a generic hash function, a server system, or a computer" did not add "significantly more" to the abstract idea of using content-based identifiers to manage data). Similarly, in SAP America, we disagreed that claims using databases and multiple processors added an inventive concept where the claims merely required "already available computers, with their already available basic functions, to use as tools in executing the claimed process." 898 F.3d at 1169-70. These same principles apply to the asserted claims, which use general-purpose processors to perform the steps of collecting, transmitting, receiving, and compiling users' answers and matches. See, e.g., '321 patent claim 8. Thus, we conclude that the asserted patent claims— and specifically, claim 8 of the '321 patent —do not provide an inventive concept by virtue of their use of multiple processors, match servers, unique identifications and/or a match aggregator.
Our conclusion is confirmed by the '321 patent's specification. Rather than focus on how to implement a distributed architecture, the '321 patent teaches the use of "conventional" processors, the use of a "web server computer 804" that can be a "conventional server computer system" inclusive of the "match aggregator and/or match server," and that "[t]he physical connections of the Internet and the protocols and communication procedures of the Internet are well known to those of skill in the art." '321 patent col. 8 l. 51 to col. 9 l. 5, col. 10 ll. 10-12. These conventional components used in an expected manner do not provide an inventive concept.
We are also not persuaded by Trinity's argument that certain claims contain an inventive concept because they are performed on a handheld device, use a matching application, or permit review of matches using swiping. Appellant's Br. 32. Just as a claim is not rendered patent eligible by stating an abstract idea and instructing "apply it on a computer," a claim is not rendered patent eligible merely because the abstract idea is applied on a handheld device or using a mobile application. See TLI Commc'ns, 823 F.3d at 615. Indeed, the '685 patent teaches that mobile phones and mobile applications had been established by the time of its invention, '685 patent col. 1 ll. 27-29, which confirms that the mere use of a mobile device, matching application, and/or "swiping" on a mobile device was not inventive.
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