No Technical Improvement Means No Patent-Eligibility

Here is a case illustrating a far from unusual scenario that also illustrates the morass of the current law of patent-eligibility under the Mayo/Alice test and 35 U.S.C. § 101. In NetSoc, LLC. v. Match Group, LLC, No. 3:18-CV-01809-N (N.D. Texas July 22, 2019), a district court easily granted a motion to dismiss, finding patent claims directed to online dating to be patent-ineligible under § 101. A little over a year prior, the U.S. Patent and Trademark Office had allowed the claims without making a § 101 rejection.

Claims of U.S. Patent No. 9,978,107 are directed to “establishing a social network.” The court found the claims to be abstract, summarizing their focus

as: (1) maintaining a list of participants, (2) presenting a user with a list of other participants based on selection criteria, (3) allowing the user to have limited contact with chosen participants, and (4) updating the rating of a participant based on tracked response times.

Citing Federal Circuit decisions including SAP America, Inc. v. Investpic, LLC, 898 F.3d 1161 (Fed. Cir. 2018) and Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), the court characterized the claims as providing “results of data collection and analysis” and thus “resid[ing] squarely in the realm of abstract ideas.” The claims recited only generic computing technology, i.e., although court did not use these words, lacked a technical improvement, and therefore “fail[ed] both steps of the Alice test.”

So this was an easy § 101 case for a district judge. And it was evidently an easy § 101 case for the USPTO, which allowed the claims in the second Office action, with nary a § 101 rejection. (Take a look at the file history for U.S. Patent No. 9,978,107.) The ’107 patent issued from a long priority chain, and I confess I did not look at those file histories – but regardless, the lack of a § 101 rejection in the application for the ’107 patent is certainly striking in light of the ultimate fate of the claims. (And I would bet this is the ultimate fate – even if appealed, can anyone see the Federal Circuit reversing?)

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