Matching users by their answers to questions is abstract, and a plea for claim construction does not delay the ruling

2023-07-14Fed. Cir.

Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355 (Fed. Cir. July 14, 2023) (precedential) (Cunningham, J., joined by Stoll and Bryson, JJ.), affirming Trinity Info Media, LLC v. Covalent, Inc., 562 F. Supp. 3d 770 (C.D. Cal. 2021) (Holcomb, J.)

United States Patent Nos. 9,087,321 and 10,936,685 recite processors and memory that receive user information to build a profile, present a polling question with a finite set of answers and a unique identification, store the selected answer, compare it "against the selected answers of other users, based on the unique identification, to generate a likelihood of match," and display matching profiles within a threshold. Claims of the '685 patent add a hand-held device and results reviewable by swiping. Judge Holcomb of the Central District of California dismissed under Rule 12(b)(6), and the Federal Circuit affirmed in an opinion by Judge Cunningham, joined by Judges Stoll and Bryson. At step one the claims are directed to "the abstract idea of matching based on questioning," because "A human mind could review people's answers to questions and identify matches based on those answers"; the hand-held device, swiping, and claim 8's web servers, database and match aggregator merely supply a distributed environment, and the specifications frame the problem as improving polling, not computers. At step two the complaint's allegations that the prior art lacked these features were conclusory, and the asserted advantages "merely reflect the improved speed inherent with applying the abstract idea using a computer." A patentee resisting dismissal "must propose a specific claim construction or identify specific facts that need development and explain why"; Trinity named terms but proposed no construction.

What it changesRecommendation and matching, which is what most deployed machine learning does, is abstract when claimed as comparing answers to find similar users, however many servers the claim names. The eligible subject in a matching system is the specific computational technique, and this decision shows where Trinity left it: the "in memory, two-dimensional array" that Trinity said gave linear speed across match servers sat in unasserted dependent claim 7, so the panel never had to weigh it. For a drafter, the mechanism that produces the speed or the accuracy belongs in the independent claim, the specification should explain why a match computed that way differs from one computed by hand, and the complaint, if it comes to litigation, must plead facts rather than the conclusion that the elements were unconventional. The decision also closes a procedural door: a request for claim construction or discovery delays a Section 101 motion only when the patentee says what construction it wants and why it changes the result.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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