Another Communication Method – Not Patent Eligible

by Dennis Crouch.  NOTE – The patentee here is represented by my former law firm MBHB, including my mentors of mine Dan Boehnen & Grant Drutchas. MBHB is also a financial sponsor of Patently-O. That said, I have not had any communication with MBHB regarding this case. 

British Telecom v. IAC/InteractiveCorp and Tinder, Inc. (Fed. Cir. 2020)

In a short nonprecedential decision, the Federal Circuit has again affirmed a FRCP 12(b)(6) dismissal of an infringement lawsuit based upon a finding that the patent improperly claims an abstract idea.  The district court decision was written by Federal Circuit Judge Bryson sitting by designation.

Here, the claims walk through a step-by-step method of using a user’s geo-location to match the user with a short-list of relevant information sources and push those out to the user’s device. U.S. Pat. No. 6,397,040 (1997 priority date).

Steps in claim 1:

A telecommunications system server (i) proactively tracking each individual user, (ii) accessing location data to determine geo-relevant information sources; (iii) dynamically developing a shortlist of information sources that the server deemed relevant to a specific user based on both the user’s geographical location and other personalized factors, and (iv) then pushing that shortlist out to the user.

On appeal, the Federal Circuit found the claims generally directed to providing location-specific information to users — an abstract idea.

We have previously held that tailoring the provision of information to a user’s characteristics, such as location, is an abstract idea.

The court went on to hold that that the claims added nothing new — an inventive step — to take claim 1 across the patent eligibility threshold.  Here, the court only indicates that the claims recite “generic computer hardware.” The court focused only on the tech hardware and court did not particularly reference the patentee’s arguments of dynamic individualized user tracking and new techniques of combining data.

Non-Asserted Claims: In the case, the defendants challenged all 44 claims in the patent, but only discussed claim 1. The district court found all 44 ineligible – writing without further discussion that its analysis of claim 1 “applies equally to all claims of the ’040 Patent.”  On appeal, the Federal Circuit affirmed, explaining that:

Because British Telecom did not present any “meaningful argument for the distinctive significance of any claim limitation” not found in claim 1, the district court did not err in finding that British Telecom had forfeited its ability to argue that other claims are separately patent eligible.

Slip Op. Quoting Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).  The odd aspect of the court’s citation of Berkheimer is that the patentee had relied upon the same portion of Berkheimer for its argument that claim 1 cannot simply be assumed to be a representative claim if the patentee argues that limitations in the other claims “bear on patent eligibility and never agreed to make claim 1 representative.”  Berkheimer.

= = = =

Note that the district court dismissed this portion of the action and issued final judgment with respect to the ‘040 patent.  The case is ongoing, however, with respect to other asserted patents.

19 thoughts on “Another Communication Method – Not Patent Eligible

  1. 5

    We are just going to forget about science and proclaim things as abstract and forget about enablement and pretend that we are experts. We will declare what we like and don’t like. We are the Obama appointments selected for our irrational hatred of patents and our oath to burn the patent system down in exchange for our lifetime grub bags. We feel we are great and noble. We don’t understand technology, science, or innovation, but we are sure that we can figure out any invention back in chambers with a warm towel to clean up the mess afterwards.

    We are the Obama stacked court. We love to invalidate all patents and to burn the patent system down. We love to think of ourselves as experts in science and technology, although we have no training and no understanding beyond what our clerks tell us. But when we tell our clerks to come up with a way to invalidate the claims and proclaim the abstractions of existence, then we feel good. It is good to proclaim things. People must learn that we are the proclaimers. We are the all powerful with our proclamations. People must learn to accept all that we say. People will learn. We are the Obama judges. We rule.

    1. 5.1

      We have been given the power by the Scotus to declare anything abstract with nothing more. We don’t care about no ladder of abstraction. We don’t care about no enablement. We don’t care about no innovation. We are the Obama stacked court. Our abstraction wand can make any patent disappear.

      And we don’t care what you think of our jurisprudence as we are appointed for life.

      1. 5.1.1

        I agree with this one more than the first — we clearly have the real world manifestation of the psychological thought experiment of training simians one a cage with a firehose.

        The simians are the CAFC judges.
        The wielder of the firehose is the Supreme Court (rivaling the anti-patent Court of the 1930s and 1940s which are least had the decency to self-christen themselves with the phrase of “The only valid patent is one that has not yet appeared before us”).

        The bananas hanging from the center of the cage, above the step-ladder, and to which any motion towards is greeted with a blast from the firehose is the original mandate of the CFAC.

        Sadly, we have a spineless (at best — but more likely merely bought off) Congress unlike the Congress that rebuked the Supreme Court and passed the Act of 1952.

  2. 4

    Dennis, please do your readers a favor and list the panel at the beginning of the summary. With Dyk, Taranto and Hughes on this panel, the result isn’t a surprise.

  3. 3

    The subject patent is so old that it apparently already expired in 2018. Using a cell phone user’s geo-location to supply it with a short-list of relevant personally desired information has been around for years, so one wonders why this patent was not sued on before now? Was it already licensed by others? [But for a recent Sup. Ct. decision one might wonder why laches was not effectively asserted?]

  4. 2

    Why pound 102, 103, or 112 . . . when it’s oh, so easy to pound 101?

    It’s 2020 Congress. Where’s that eligibility restoration for all areas of innovation you promised way back in 2019?

    Bueller? Beuller? Ferris Beuller?

    Congress? Congress? American Congress?

    1. 2.1

      “It’s 2020 Congress. Where’s that eligibility restoration for all areas of innovation you promised way back in 2019?

      Bueller? Beuller? Ferris Beuller?

      Congress? Congress? American Congress?”

      Quinn’s interview with Senator Tillis provides a pretty clear answer.

      1. 2.1.1

        That answer was that Tillis is NOT the champion that is required, as he lacks the necessary spine to bypass those who would wheel a Trojan Horse to within the city gates.

        Pro Say’s pleadings remain on point.

    1. 1.1

      The evil genius of the CAFC burns another patent down. Taranto. The king of the stacked court. The lizard of SV.

      1. 1.1.1

        Taranto is horrendous, but king and lizard (not lizard king, mind you)…?

        There are many on the current bench that absolutely must go. But first out the door (for me) would be Prost. She is the current ‘head’ of the bench which makes her the Queen.

        I would even put Dyk, Lourie and perhaps even Reyna before Taranto on the “got to go” list.


          No way. Taranto is the smartest of them and believes that patents are bad. Taranto is trained in the DOJ way of thinking from Benson.

          Just a real bad character.


            OK – I may bump him up on my list then – but the Queen is first. She orchestrated her way into ‘power’ and has abused that position by allowing the complete disregard of prior panel decisions to new panel decisions, which has made a MOUNTAIN out of the original Gordian Knot created by the Supreme Court.

            I absolutely cringe at the LACK of leadership for the CAFC at a time when leadership has been most critical.

            Let’s NOT forget that earlier leadership of Judge Rich pushed back against the Supreme Court’s ‘extra-statutory REWRITING in that very same Benson mindset.


              I think Prost is just in it for the power and can’t understand any of the issues beyond a rudimentary level. She doesn’t understand any of the science and very little of the patent law.

              She probably should be put first for doing the most damage.

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