IP Law Daily, PATENT—Fed. Cir.: IBM patents rejected as directed to user experience rather than to computer advances, (Jan 9, 2024)

By Robert B. Barnett Jr., J.D.

Generic allegations of inventiveness are insufficient.

The Federal Circuit has affirmed dismissal of IBM’s patent infringement claims against Zillow given that the two graphical interface patents were patent-ineligible because they described a method for improving search results (without advancing computer capabilities) that were well-known prior to the patent and could have been performed with pen and paper. In agreeing to grant Zillow’s motion to dismiss, the Federal Circuit reiterated its rule that mere allegations of inventiveness, without any effort to tie those allegations to the patent, will not survive the pleading stage. One of the three panel judges filed a partial dissent, agreeing with dismissal as to one of the patents, but she would have allowed the claim under the second patent to proceed because the patent described a method for allowing the computer to improve a user’s search capabilities over time, which should have been enough to survive the motion to dismiss (International Business Machines Corp. v. Zillow Group, Inc., January 9, 2024, Hughes, T.).

Background. IBM sued Zillow Group, Inc., in Washington State federal district court, for infringing five patents. Two patent claims were dismissed. When the court agreed to dismiss the remaining three, IBM appealed the decision on two of the three claims to the Federal Circuit. Thus, the appeal involves only two of the original five patents.

The two patents subject to the appeal are U.S. Patent Nos. 6,778,193 (the ’193 patent) and 6,785,676 (the ‘676 patent). The ’193 patent is directed to a graphical user interface that improves search result presentation. When a user performs a search, the results are displayed in three visual workspaces. The ’676 patent is also directed to improved search result displays. It offers a four-step method for annotating resource results.

In dismissing the ’676 patent, the district court ruled that, although the patent offered an improved method for viewing search results, it did not “advance computer capabilities per se,” which rendered it unpatentable. The court also noted that the same process could have been performed by pen and paper, although slower than the computer could. In dismissing the ’193 patent, the district court made a similar ruling, concluding that the claims were directed toward the abstract idea of more precisely tailoring search queries. In doing so, the court rejected IBM’s argument that user context icons, separate workstations, and iterative navigation were inventive concepts. It was nothing more, the court said, than a method that was well-understood, routine, and conventional at the time it was patented.

As a result, both patents were deemed ineligible under 35 U.S.C. §101, and the claims were dismissed. IBM appealed.

Patent eligibility. The process that the Federal Circuit uses to determine patent eligibility is the two-step framework established in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). In step one, the court determines whether a patent claim is directed to an unpatentable law of nature, natural phenomenon, or abstract idea. In computer software cases, the analysis is whether the claims focus on improvements in computer capabilities rather methods that merely use computers as a tool. Improving the user experience in typically not enough to satisfy step one. In step two, the court determines whether the claims transform the abstract idea into patentable subject matter. During its analysis, the majority ruled that both patents failed both Alice steps.

The ’193 patent. IBM argued that the district erred by overgeneralizing the ’193 patent to an abstract idea that could be done by a pen-and-paper approach. The Federal Circuit, however, agreed with the district court that the ’193 patent merely mimics what humans do to search for information. This is precisely the type of claim, the appellate court concluded, that has been rejected in previous cases at step one as an abstract idea. IBM never explained how the claims do anything more than identify, analyze, and present data to a user without demonstrating any improvements in how computer applications are used. They disclose no technical improvements, the Federal Circuit said, and the district was correct in concluding that the ’193 patent was directed to a patent-ineligible abstract idea.

The appellate court then concluded that the ’193 patent also failed step two. IBM’s allegations of inventiveness never concerned the graphical user interface’s capability or functionality. Instead, they merely related to the user’s experience and satisfaction with the search results, the Federal Circuit said. IBM cited Weisner v. Google LLC, 51 F.4th 1073 (Fed. Cir. 2022) for the proposition that the Federal Circuit will allow well-pleaded factual allegations to survive the motion to dismiss. While that concept is true, the Federal Circuit said, the general rule is still that a district court is not required to accept a patent owner’s “conclusory allegations of inventiveness.” Generic allegations of inventiveness are insufficient. In this complaint, the Federal Circuit ruled, the allegations of inventiveness were never tied to the claims or the specifications, which distinguishes it from Weisner.

The appellate court, therefore, affirmed the district court’s holding that the ’193 patent was directed to ineligible subject matter under §101 and that the motion to dismiss the patent should be granted.

The ’676 patent. Turning to the ’676 patent, the Federal Circuit noted that the district court had concluded that the ’676 patent failed step one because it was directed to the abstract idea of showing users the correlation between their search parameters and the search results and tailoring the results to the user. These claims, the district had said, were entirely results-oriented without revealing anything about the inner workings of that process.

The Federal Circuit agreed with that analysis and that the claims were directed to an abstract idea. The claims were directed to improving a user’s experience without containing any specific mechanism for doing so, the court noted. The appellate court also agreed with the lower court that the ’676 failed step two because IBM failed to allege any inventive concept that would have rendered the claims patent-eligible. Once again, the Federal Circuit concluded, mere allegations of inventiveness were insufficient, without some effort to tie those allegations to the patent.

User context vector. Separately, IBM argued that the district court erred when it failed to consider a claim construction dispute around the term “user context vector.” The majority, however, concluded that no such claim construction dispute existed in the record. Zillow contended that it embraced IBM’s construction of “user context vector” during the motion-to-dismiss proceedings. As a result, the appellate court affirmed the district court’s conclusion that the ’676 patent claimed ineligible subject matter under §101 and that Zillow’s motion to dismiss was properly granted.

The majority, therefore, affirmed the district court’s grant of Zillow’s motion to dismiss on both patents.

Dissent-in-part opinion. Circuit Judge Kara Stoll, however, dissented in part. While she agreed that the ’193 patent was ineligible, she would have reversed the district court on its dismissal of the ’676 patent. In her view, the patent described a method for annotating search results that went beyond the user experience. She accepted IBM’s claim that the method improves the relevance of search results based on the user’s interactions with prior search results. She also agreed with IBM that the court should have engaged on the claim construction of “user context vector” (she contended that Zillow only partially accepted IBM’s claim construction). Thus, she argued, the majority erred when it refused to analyze the claim construction because §101 eligibility cannot be determined until the claim construction has been resolved. IBM, she contended, had demonstrated, using its claim construction, that an inventive concept plausibly existed. To reject that claim, therefore, was error.

The Case is No. 22-1861.

Attorneys: Goutam Patnaik (Desmarais LLP) for International Business Machines Corp. Steven M. Seigel (Susman Godfrey LLP) for Zillow Group, Inc. and Zillow, Inc.

Companies: International Business Machines Corp.; Zillow Group, Inc.; Zillow, Inc.

MainStory: TopStory Patent TechnologyInternet FedCirNews WashingtonNews