Patent claims directed to narrowing a search list presented to a user entering data in a mobile device have survived a Rule 12(b)(6) patent-eligibility challenge under 35 USC § 101 and the Mayo/Alice abstract idea test. WordLogic Corporation v. Fleksy, Inc., Case No. 16 CV 11714 (N.D. Ill. Nov. 7, 2017). The defendant alleged that claim 19 of U.S. Patent No. 7,681,124 was directed to the unpatentable abstract idea of “listing word completion candidates based on partial information.” However, having been presented with the question on a motion to dismiss at the pleading stage, the court declined to agree “at this early stage of the proceedings.”
Claim 19 of the ’124 patent recites:
19. A computer-readable medium comprising codes for directing a processing unit to process text entered into a personal computing device, by:
(a) receiving and displaying a partial text entry, comprising receiving at least part of the partial text entry via a keyboard, the partial text entry comprising at least a first character;
(b) in response to receipt of the first character of the partial text entry, obtaining a plurality of completion candidates from among a group of completion candidates, wherein each of the plurality of completion candidates includes a portion matching the partial text entry;
(c) displaying the plurality of completion candidates in a search list within a graphical user interface;
(d) detecting user input corresponding to selection of a particular completion candidate from among the plurality of completion candidates displayed in the search list;
(e) modifying the display of the partial text entry to correspond to the particular completion candidate selected from among the plurality of completion candidates at least while the particular completion candidate remains selected;
(f) detecting modification of the partial text entry by the user via the keyboard;
(g) obtaining and displaying in the search list a modified plurality of completion candidates from among the group of completion candidates, if the partial text entry is modified via the keyboard, wherein each of the modified plurality of completion candidates includes a portion matching the partial text entry; and
(h) obtaining and displaying in the search list a further modified plurality of completion candidates from among the group of completion candidates, if a completion candidate is accepted via the search list from the modified plurality of completion candidates, wherein each of the further modified plurality of completion candidates includes a portion matching the accepted completion candidate.
The defendant argued that this claim was “directed to the abstract idea of listing word completion candidates based on partial information, analogizing the claim to the games Hangman and Wheel of Fortune.” But the court apparently accepted the plaintiff’s argument that this was “too high a level of abstraction.”
The court acknowledged that automating mental steps previously practiced by humans would not constitute patent-eligible subject matter, citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). But the claim at issue in this case, the court said, was more properly analogized to Enfish, LLC v. Microsoft Corporation, 822 F.3d 1327, 1335 (Fed. Cir. 2016), because the claims improved operation of a computer.
The plaintiff’s argument based on Enfish, which the court seemed to accept, was that data entry was a computer-based activity with no manual analog. The plaintiff argued that helping a user take less time to enter text would result in less time to operate a mobile device. Therefore, argued the plaintiff, “claim 19 improves the operation of the device.” The court on this basis denied the defendant’s motion, taking the defendant to task for failing to offer a “compelling rebuttal,” and instead quoting “liberally” from Intellectual Ventures I LLC v. Capital One Financial Corp., 805 F.3d 1332 (Fed. Cir. 2017), which addressed management of XML documents.
Lessons for Practice
This case is an example of an expansive reading of Enflish. That is, the claims in Enflish resulted in a computer taking less time to process data. The claims here, in contrast, allow a user to take less time in using an app on a mobile device. But there was no showing that the actual amount of computer processing was reduced. Indeed, one would think that the computer here would have had to have performed more work to achieve the recited auto-suggest functionality. Thus, this court, at least, read Enfish as supporting patent-eligibility when claims improve a user’s ability to operate a computer, even if the computer’s processing is not thereby made more efficient.