Last week, the Federal Circuit issued an opinion in Weisner v. Google LLC, No. 2021-2228 (October 13, 2022), affirming-in-part and reversing-in-part the district court’s holding of ineligibility under 35 U.S.C. § 101.
Appellant Weisner is the named inventor of U.S. Patent Nos. 10,380,202, 10,642,910, 10,394,905, and 10,642,911 (the “’202”, “’910”, “’905”, and “’911” patents, respectively) which are directed generally to the creation of a digital travel history (the ’202 and ’910 patents) and the use of those digital travel histories to improve computerized search results (the ’905 and ’911 patents).
Weisner sued Google in the Southern District of New York, alleging infringement of the ’202, ’910, ’905, and ’911 patents. Google moved to dismiss Weisner’s first amended complaint as insufficiently pled under the Twombly/Iqbal standard and that the asserted patent claims are ineligible under 35 U.S.C. § 101. The district court granted dismissal on both grounds, while allowing Weisner an opportunity to amend. After amendment, Google again moved for dismissal on Section 101 and Twombly/Iqbal grounds. The district court granted dismissal based on Section 101. Weisner appealed.
The Federal Circuit affirmed the district court’s dismissal as to the ’202 and ’910 patents, finding that the asserted claims were directed to little more than the creation of a digital travel log. In the first step of the Alice analysis, the Federal Circuit agreed with the district court that humans had consistently kept records of their travels throughout history and that automation or digitization of such conventional human activity did not make the idea patentable. Turning to step two of the Alice analysis, the Court again agreed with the district court that the claims did not describe an inventive concept, as they described simply digitizing a travel log using conventional components.
The Federal Circuit reversed the district court’s dismissal of the ’905 and ’911 patents, however, holding that the Second Amended Complaint and the patents’ specification described patent-eligible inventions. The Court again concluded the asserted patent claims were directed to an abstract idea in the first step of Alice. But the Court held the claims’ specificity regarding solving a problem alleged to be particular to the internet was enough, at the pleading stage, to avoid dismissal. In so holding, the Court rejected the argument that the patents needed to disclose a new search engine algorithm to meet the “inventive concept” requirement.