“Intent Engine” Claims Fail 101 for Lack of Technological Inventive Concept

by Dennis Crouch

USC IP P’ship, L.P. v. Meta Platforms (Facebook), 22-1397 (Fed. Cir. August 30, 2023)

In a non-precedential opinion authored by Judge Pauline Newman, the Federal Circuit has affirmed USC IP Partnership’s asserted patent claims are all invalid.  Back in 2020, USC IP sued Facebook for infringing its U.S. Patent No. 8,645,300.  The arguably pro-patentee Judge Alan Albright served as the district court judge.  Like Judge Newman, he had also found the claims invalid as unduly directed to an abstract idea. USC IP P’ship, L.P. v. Facebook, Inc., 576 F. Supp. 3d 446 (W.D. Tex. 2021) (granting summary judgment of ineligibility).

A difficulty with search engines, and communication generally, is that parties often fail to fully and literally state their needs.  We are often left inferring intent based upon other clues, such as situational context or our knowledge of the speaker.  USC IP’s ‘300 patent attempts to provide some solutions to this problem through its “intent engine” that uses an “intent tool” as well as a ranking tool to provide better results. The intent engine analyzes information about the user to predict their intent and displays this inferred intent in the intent field. It also recommends webpages matching the intent in the recommendation field. The user can provide ranking data on how well the webpage matches their intent via the ranking tool, and this data is stored in a database. As recited in the claims, the intent engine combines intent prediction, webpage recommendation, and user ranking to deliver a customized browsing experience. But, the claims focus on the high-level functionality of the system rather than the technical details of how intent analysis, recommendation algorithms, or data storage operate.  In some of the claims, the process is interactive — with the system prompting visitors to confirm their intent before recommending webpages matching the intent.

As per usual, the Federal Circuit analyzed patent eligibility under the two-step test set forth in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). At step one, the court looks to whether the claims are directed to an abstract idea such as a fundamental economic practice or mathematical formula. If so, the court proceeds to step two, where it considers whether the claims contain an “inventive concept” sufficient to transform the abstract idea into a patent-eligible application. This process involves looking at the claim elements individually and in combination to assess whether they amount to significantly more than the abstract idea itself.

Applying the two-step Alice framework, the Federal Circuit agreed with the district court that the claims are directed to the abstract idea of “collecting, analyzing and using intent data.” This kind of data collection and analysis is an abstract idea, even  if implemented on a computer. The court compared USC IP’s claims to those invalidated in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).

At Alice step two, the court agreed that the claims lack an inventive concept to transform the abstract idea into a patent-eligible application. They merely invoke generic computer components like web browsers and databases. As Judge Albright explained, the “intent engine” is described only as a black box without accompanying technical details.

The patentee’s key argument on appeal was at step-2, arguing that the “intent engine” was not a conventional or generic computer component, but provided a technical solution rooted in computer technology like the claims in DDR Holdings. The patentee argued the intent engine played a role that went beyond well-understood, routine, and conventional computer functionality.  And, the patentee provided expert testimony at the district court level in an attempt to support this conclusion.

On appeal, the Federal Circuit rejected these arguments and again affirmed Judge Albright’s holdings. Albright had disregarded the expert testimony as merely providing legal conclusions without underlying factual support — finding it not “backed by any concrete facts from the specification or prior art.”  The appellate panel went on to agree that the ‘300 patent claims are not directed to any improvement in computer functionality itself but merely describe the use computers as a tool.

The claims here were filed and issued prior to Alice and Mayo at a time when many patents were focused more on the functional terms without the accompanying technical details.  Today, many are thinking of similar tools in the generative AI context. Like here, I expect that gen-AI tools will face high patent eligibility obsticles absent inclusion of strong technical implementation details placed at least within the specification, but more likely within the claims themselves.


27 thoughts on ““Intent Engine” Claims Fail 101 for Lack of Technological Inventive Concept

  1. 4

    The results are positive for the world, but the Alice regime is a travesty as legal process. It’s entirely forum dependent. It’s a blunt tool made to defeat “Do It on a Computer” claims and business process/functionally claimed nonsense.

    But it could easily- as practiced now- defeat some of the iconic patents.

    How about link to patents.google.com ?

    It’s the microwave oven. The abstract idea is that short wavelength energy cooks food. Everything from there is routine and conventional to PHOSITA. No new structure invented (the cavity magnetron is the core technology) or claimed.

    Alice should be limited to methods that result in some species of new and useful information. If there is a mechanical or chemical change as the useful result of the process, it should be an eligible process, and the useful result of a method should be construed as a matter of law, just like the words of a claim are.

    1. 4.1

      What is the proposition here? That if back in the 1930s people had been filing tens of thousands of c r a p patent applications based on the idea that “every punchcard creates a new machine” then microwave cooking technology would never have developed?

      Very silly.

  2. 3

    So, invalidated under 103 but using 101 to enjoy the ease 101 offers judges of just yapping out whatever they want and concluding the claims are invalid.

  3. 2

    “The claims here were filed and issued prior to Alice and Mayo at a time when many oxygen deprived grifters were attempting to exploit holes in the patent system created by poorly reasoned and constitutionally suspect Supreme Court decisions, particularly the justifiably maligned decision in Diehr.”

    Fixed for accuracy. What is the point in trying to defend patent claims that were NEVER defensible and were ALWAYS a blight on the patent system?

    1. 2.1

      particularly the justifiably maligned decision in Diehr.”

      You admit too much in your disdain, and quite miss the fact that the Supreme Court tied itself in a Gordian Knot by not only NOT “justifiably maligned” that case, but doubled down with a “case most on point,” even as they contradicted themselves ON that case.

      This of course was HUGELY covered in your ramp-up to the Bilski decision.

      That you are unable — and unwilling — to objectively view the Gordian Knot really is no surprise.

    1. 1.1

      It is more abundantly clear that your “fuel” has always been Double leaded.

      I am left wondering though, what went along with those old-fashioned paint chips? Detroit water perhaps?

    2. 1.2

      Classic death by Sec. 101:
      – No technical details on a key technical component (KTC) (the intent engine in this case) present in the spec: Check!
      – No technical details claimed for the KTC: Check!
      – Claims consist of obtaining data from the undefined KTC and processing it in routine ways: Check!

      Bonus: admits in the spec that the KTC (intent engine) was invented by someone else

      1. 1.2.2

        Bonus: admits in the spec that the KTC (intent engine) was invented by someone else
        Did they claim the intent engine alone? No — it was merely partly of the claimed invention, as a whole.


          Repeating “as a whole” and pounding the table doesn’t really have the magical validity glossing effect that you think it has.


            … the point is not “that you think it has,” but rather, “the Rule of Law is being trounced.”

            But you, Malcolm, have ever been a “Ends justify the Means” kind of guy, so this from you is nothing more than you being you.

    3. 1.3

      “My intent engine uses unleaded logic.”

      Kind of interesting comment. The “intent engine” does indeed run off of fuel. Since the intent engine cannot perform its functions without consuming time, space, and energy, and most of the electricity in the US is generated by coal, then the correct answer is that it runs off of coal.

      1. 1.3.1

        [M]ost of the electricity in the US is generated by coal…

        Not any more. It has been several years since coal was the #1 source. Natural gas has been the leader for several years now, and nuclear just overtook coal last year. In other words, coal is #3 anymore.


          Looks more like coal just dipped below nuclear, not nuclear overtook it as nuclear just stayed the same it seems. However it is great to see solar blasting off and wind also. Would like to see wind hit like 25% in my life and solar hit 25% as well. Be a near miracle but could happen.

          If we could swing nuc 25%, wind 25% and solar 25% the rest would barely matter.


            Sure 6, 😉

            Talking about societal costs, let’s figure the carbon footprint involved in the manufacture, maintenance and other ecological costs of those non-fossil fuel alternatives….


            Would like to see wind hit like 25% in my life and solar hit 25% as well. Be a near miracle but could happen.

            I am not sure what would be so “miraculous” about such an outcome. Once upon a time, we burned a lot of coal because coal was cheap. Now solar and offshore wind are both cheaper than coal, or even gas. Solar and wind will each come—by operation of market forces—to account for >25% of U.S. energy consumption in our lifetimes. In any event,

            I agree that this will be a happy outcome. Cheap, abundant energy with less air pollution will be an improvement for all of us.


              When external costs are figured in (such as inputs, retirement costs, distribution, storage, ecological factors, energy density, and the like), solar and wind are nowhere close to ANY of the fossil fuels.

              Greg is just doing that Sprint Left gaslighting.


              Reducing consumption one way or another, solves many issues and if the right numbers are reached, 6’s wishes might come true sooner.


                Reducing consumption….

                Except for the fact that such ham-fisted edicts tend to be disproportionately meted out to the p00r and disadvantaged.

                Rather than “reducing,” we ALL need to realize that increasing consumption has been affirmatively tied to INCREASING the general well-being of all of mankind.

                The answer is not — and cannot be — in reducing. The answer is in striving for better energy provisions.

                Come now Chrissy, let’s abandon the Klaus Schwab WEF adoration club.

                1. No informed rational person believes that continuous increase of consumption necessarily leads to even a quasi-commensurate increase in the general well-being of humankind. You might consider repenting that frivolity, if not currently, at some time in the future perhaps, if there were to come a time when there’d be any value in your knowing it, schnookums 🙂

                2. Except the fact that if you chart ENERGY consumption against well-being, you DO reach the conclusion that I present.

                  That may be an inconvenient fact for you, but a fact it is.

                  No frivolity from me.


                Reducing consumption one way or another, solves many issues…

                On a global scale? This just does not seem possible. There are billions of people in Asia and Africa who are presently using a lot less energy per person than we are, but who want American levels of comfort and convenience. Even if Americans scale back consumption* on a per capita basis, net energy consumption worldwide will rise.

                * Not that I favor such an idea. There are millions of joules of solar energy falling uselessly on the sand every day. I would prefer to see that energy harvested to power motors and processors, rather than just to heat the sand.

                1. More Yglesias nonsense in hidden links….

                  Besides that, Chrissy continues to parade around woefully uninformed about the whole Climate religious movement.

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