Automating a background investigation step by step is still the abstract idea of performing a background check

2024-07-18Fed. Cir.

Miller Mendel, Inc. v. City of Anna, Texas, 107 F.4th 1345 (Fed. Cir. July 18, 2024) (precedential) (Cunningham, J., joined by Moore, C.J., and Stoll, J.), Nos. 2022-1753, 2022-1999, affirming Miller Mendel, Inc. v. City of Anna, 598 F. Supp. 3d 486 (E.D. Tex. 2022) (Gilstrap, C.J.)

United States Patent No. 10,043,188 claims a computer method to assist an investigator in a pre-employment background investigation: receiving applicant data, emailing the applicant a document hyperlink, receiving the response with reference contacts, classifying each reference and emailing it a hyperlink to documents chosen for its class, storing the reference's response, and generating a list of law enforcement agencies from the applicant's address. The City of Anna won judgment on the pleadings on claims 1, 5 and 15 under Section 101 of Title 35 of the United States Code, and the Federal Circuit affirmed. At step one it held the claims directed to "the abstract idea of performing a background check" and read the specification's statement that the system automates "the majority of the tasks of a common pre-employment background investigation" as confirming that the problem solved was efficiency in an abstract process, not computer technology. That hyperlinks and email cannot be done mentally did not matter: "the inability for the human mind to perform each claim step does not alone confer patentability." At step two the components were generic, the specification said the steps could run "in any random order," and the automation statement conceded the tasks were routine. On cross-appeal, the district court was held to lack jurisdiction over claims the patentee had withdrawn before the ruling, so the judgment covers only claims 1, 5 and 15.

What it changesWorkflow automation claims fail at step one however many computer steps they recite, and this decision shows two sentences in a specification doing the damage: a statement of purpose framed as doing the human process more efficiently, and an admission that the invention automates tasks of a common process. An artificial intelligence feature inside a workflow product, a classifier that assigns the reference class or a model that drafts the follow-up questions, is eligible only if the claim recites the technique and the specification describes an improvement in how the computer performs it rather than in how fast the investigator finishes. Strike "automates" and "more efficiently" from the problem statement, and never write that step order does not matter unless it does not, because the court used that line to defeat the ordered-combination argument. The jurisdiction holding cuts the other way: a patentee who narrows the asserted claims before the ruling keeps the unasserted claims alive, so narrow early and in writing when an early Section 101 motion arrives.

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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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