PatentNext Takeaway: Demonstrating that a claimed invention provides an “improvement” to an underlying computing device is one of the best ways to achieve patent eligibility pursuant to Section 101 of U.S. Patent Law. However, the Federal Circuit has repeatedly held that an improvement to a “User Experience” (UX) alone is insufficient. The Federal Circuit recently issued yet another case, further cementing its position that improving a UX, without more, fails to demonstrate a technical improvement for satisfying Section 101 per the Alice two-part test.
The U.S. Court of Appeals for the Federal Circuit recently upheld a decision from the Western District of Washington, confirming that two patents held by the plaintiff were not eligible for patent protection under 35 U.S.C. § 101. See IBM Corp. v. Zillow Group, Inc., No. 2022-1861 (Fed. Cir. Jan. 9, 2024). The patents in question, which focused on enhancing the display of search results, were deemed to cover abstract ideas without any inventive concept, especially since they didn’t offer any technical improvement in computer application usage. This conclusion was reached despite a partial dissent from Judge Stoll, who contended that the court should have examined the specific interpretation of “user context vector” in one of the patents.
The Federal Circuit’s assessment employed the Alice two-step analysis, scrutinizing the patents’ claims under this framework.
With respect to the first step, and for the first patent (U.S. Patent No. 6,778,193), both the lower and appellate courts concurred that the claims merely abstracted the notion of improving user interaction with computer applications, lacking any tangible technical improvement. A similar consensus was found regarding the second patent (U.S. Patent No. 6,785,676), where the claims were seen as abstractly addressing the organization and presentation of search results based on user context without a clear, practical mechanism.
In particular, for the first step of Alice, the Federal Circuit found that:
“The claims [of each patent] are directed to improving a user’s experience [UX] when viewing search results but do not contain any specific mechanism for doing so. For example, representative claim 14 uses results-oriented language, such as “receiving a resource response set of results,” “receiving a user context vector,” “mapping the user context vector,” and “controlling the presentation of the resource response set,” without any explanation for how these steps are carried out. Thus …the claims are directed to the abstract idea of displaying and organizing information.
Further, for the second step of Alice, the courts dismissed the plaintiff’s contention that the claims harbored an inventive concept, emphasizing that the plaintiff’s arguments on inventiveness were more aligned with user satisfaction rather than technical ingenuity or functionality. The appellate court also echoed the district court’s stance that mere conclusory statements on inventiveness, detached from the patent claims or descriptions, fail to meet the requisite legal standards.
The patentee had provided an inventor declaration to demonstrate an “improvement,” however, the Federal Circuit found that the inventor’s arguments were untethered to the claims or patent specification of the patent and, thus, failed to show an inventive concept, e.g.:
“[T]he portions of the inventor declaration discussing the inventive aspects of the … patent do not cite to the patent and contain discussions that go beyond what is claimed or described in the patent document. For example, the declaration states that the “user context vector would populate the data structure with a wide variety of contextual information specific to a particular user through a back-and-forth interaction between the user and the computer system as the user interacts with the customer self-service system.” … But none of this is in the specification or the claims.
The ruling underscores a crucial principle for patent claimants, especially in the realms of software and graphic user interfaces (GUIs): merely enhancing a UX does not suffice for patent eligibility. It emphasizes the necessity for claims to be firmly anchored in concrete, technical advancements rather than abstract ideas, setting a further precedent that improving a UX alone is insufficient to satisfy Section 101.
It also underscores the importance of drafting patent claims to include how the claimed invention is tied to the improvement. Introducing the “how” into the claims typically avoids functional claim drafting, something that is frequently at issue for Section 101 rejections from the USPTO office. For examples of how to draft a patent-eligible claim, in view of the warning of the above case, see PatentNext: How to Patent Software Inventions: Show an “Improvement.”
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