Patent claims directed to presenting a user with a “short list” of “information sources” for selection based on a user location are patent-ineligible under 35 U.S.C. § 101 and the Alice/Mayo test. British Telecommunications PLC v. IAC/InterActiveCorp., No. 2019-1917 (Fed. Cir. June 3, 2020) (opinion by Judge Taranto, joined by Judges Dyk and Hughes) (non-precedential). The Federal Circuit panel upheld the district court’s decision, on a Rule 12(b)(6) motion to dismiss, that all claims of U.S. Patent No. 6,397,040 are ineligible under § 101. (The underlying lawsuit involves six patents, but only the § 101 eligibility of the ’040 patent was at issue in this appeal.)
Representative claim 1 of the ’040 patent recites:
A method of selecting information sources from which information is provided to users via a telecommunications system, said method comprising:
tracking the location of a user in the system by receipt of tracking information for said user;
accessing location data indicating localities in which information from the respective sources is deemed to be relevant;
generating a shortlist of information sources for said user on the basis of said tracking information and said location data; and
transmitting said shortlist to a terminal associated with said user so as to allow said user to select an information source of interest and thereby to access information from said source.
Under part one of the Alice test, the court was able to quickly distill an abstract idea to which the claims were directed: “providing lists of location-specific information sources to users based on their location.” The claims applied only generic computing technology to implement the abstract idea, and the Federal Circuit had “previously held that tailoring the provision of in-formation to a user’s characteristics, such as location, is an abstract idea.” (Citing Intellectual Ventures I LLC et al. v. Capital One NA (Fed. Cir. 2015) and Affinity Labs of Texas, LLC v. Amazon.com Inc. (Fed. Cir 2016)).
The court’s analysis under part two of the Alice test was even more succinct. There was no transformative inventive concept overcoming the abstract idea because there was nothing beyond application of generic technology in the claims. (Citing Electric Power Group, LLC v. Alstom S.A., (Fed. Cir. 2016).
Finally, the patent owner “disputed that claim 1 was representative,” but failed to explain why. There was, therefore, no error in the district court’s finding that the patent owner forfeited its ability to argue for the patent-eligibility of other claims.
Lessons for Practice
This is a relatively short post because the court’s opinion was very short. Which is kind of the point. As I have said before, for all the confusion, there are easy patent-eligibility cases under § 101. This is another good example of these.