By Dennis Crouch
In Miller Mendel, Inc. v. City of Anna, Texas, No. 2022-1753 (Fed. Cir. July 18, 2024), the Federal Circuit affirmed a district court’s judgment on the pleadings that the asserted claims of Miller Mendel’s U.S. Patent No. 10,043,188 (‘188 patent) are ineligible for patent protection under 35 U.S.C. § 101. The court also affirmed the denial of the defendant’s motion for attorneys’ fees under 35 U.S.C. § 285.
The ‘188 patent is directed to “a web based software system for managing the process of performing pre-employment background investigations.” Representative claim 1 recites a “method for a computing device with a processor and a system memory to assist an investigator in conducting a background investigation of an applicant for a position within a first organization.” The claim goes on to recite several steps the system performs, including:
– receiving data identifying the applicant, position, organization, and investigator;
– storing a new applicant entry associated with the data;
– transmitting an applicant hyperlink to the applicant’s email to view documents;
– receiving an applicant response with reference data about a reference source;
– determining a reference class and selecting documents based on the reference class;
– transmitting a reference hyperlink to the reference’s email to view documents;
– receiving and storing a reference response associated with the applicant entry; and
– generating a suggested reference list of law enforcement agencies based on the applicant’s address.
Miller Mendel sued the City of Anna, Texas, alleging the City’s police department infringed claim 1 by using third-party software for pre-employment background checks. However, the district court sided with Anna, finding the asserted claims ineligible under § 101.
On appeal, the Federal Circuit affirmed on all issues. Regarding patent eligibility, the court applied the two-step Alice/Mayo framework. At step one, the court determined the asserted claims are directed to the abstract idea of performing a background check. The court found the claim language itself shows the invention’s focus served the human-organizing purpose of “assist[ing] an investigator in conducting a background investigation,” and the individual claim steps were all focused on information handling at a technically generic level. The court concluded that this sort of information collection and analysis fits within the “familiar class of claims directed to a patent-ineligible concept.” (quoting Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355 (Fed. Cir. 2023)).
Looking deeper, the court also concluded that the specification confirmed the invention’s focus on the abstract idea, as it states the invention addresses the problem of helping investigators “more efficiently and effectively conduct a background investigation” by “automat[ing] the majority of the tasks of a common pre-employment background investigation.”
I mentioned before, a straightforward path to a non-abstract invention is to identify a technical problem and then associate that with a technical solution. While it is possible to start with an “abstract” problem and reach a patentable invention, folks who tell that story in their patent are starting on the wrong foot (from the 101 perspective). Here, the court noted that “the problem facing the inventor was the abstract idea of performing background investigations more efficiently and effectively, not an improvement to computer technology.”
The court rejected Miller Mendel’s argument that the claims cannot be directed to an abstract idea because some steps like transmitting hyperlinks by email cannot be done mentally or with pen and paper. The court reiterated that “the inability for the human mind to perform each claim step does not alone confer patentability,” (quoting FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016)), and “requiring the use of a computer alone does not change the focus of a claim directed towards an abstract idea into one directed towards ‘a specific improvement to computer functionality.'” (quoting In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607 (Fed. Cir. 2016)).
The court also distinguished the claims from software patentee’s favorite case, Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). In that case, the court found claims eligible that were “directed to a specific type of data structure designed to improve the way a computer stores and retrieves data in memory.” Here though the court concluded that the claims merely used generic computer technology and were not directed to an improvement in computer technology.
At Alice/Mayo step two, the court determined the asserted claims lack any inventive concept that would transform the abstract idea into a patent-eligible application. The claims recite only “well-understood, routine, conventional computer components” like a computing device, processor, and memory. The court found the ordered combination of limitations was not inventive either, noting the specification states the steps can be performed in any order. The specification further confirms the lack of inventive concept by describing only generic computer components and stating the system memory and computer storage media can be “of any type.”
The court also rejected Miller Mendel’s argument that there was no evidence the “transmitting an applicant hyperlink” and “generating a suggested reference list” elements were well-understood, routine, and conventional at the time of the invention (2011). But the court pointed to the specification’s own description of the invention as “automat[ing] the majority of the tasks of a common pre-employment background investigation,” thereby acknowledging such tasks were previously routine.
This was a case where both Chief Judge Moore and Judge Stoll were on the panel — two of the remaining judges who tend to favor patentees. At oral arguments though Judge Stoll was appeared confused as to why the patentee continued to pursue this case: “Stating an abstract idea while adding the words apply it is not enough for patent eligibility.”
Cross appeal: The City of Anna cross appealed on two points. First, the district court had expressly limited its holding only to claims 1, 5, and 15 that had been asserted in the case — finding that no case or controversy existed over the unasserted claims. Though Miller Mendel’s complaint initially alleged infringement of “one or more claims,” it subsequently narrowed the claims to only 1, 5, and 15 in its Rule 12(c) opposition brief and infringement contentions before the court ruled on the dispositive motion. The Federal Circuit affirmed this holding, distinguishing Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374 (Fed. Cir. 2012), where jurisdiction existed over unasserted claims because the defendant had filed invalidity counterclaims covering all claims, which the City did not do here.
Finally, the Federal Circuit held the district court did not abuse its discretion in denying the City’s motion for attorneys’ fees under § 285 agreeing that failed enforcement attempts does not create an exceptional case.
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The patentee has a continuation application still pending. After receiving a final rejection, the applicant most recently filed an RCE and also requested a 3 month suspension of examination under 37 C.F.R. 1.103. This will provide the applicant time to reconsider the claims in light of the Federal Circuit decision here. 17/316,686. Any suggestions for the prosecuting attorneys from the Canadian Rylander firm? Currently pending claim 1 is shown below:
“At oral arguments though Judge Stoll was appeared confused as to why the patentee continued to pursue this case: ‘Stating an abstract idea while adding the words apply it is not enough for patent eligibility.'”
If they appeal this, then you probably should ask the same question that should have been asked of Bilski: what anti-patent organization is secretly funding this terrible case in order to get similarly terrible anti-patent precedent?
As for the claim in their continuation, why even bother with 101? There’s got to be an anticipatory reference out there saying “are you investigating someone from city [x]? Try calling the city [x] police department,” which fully recites “receiving information about their address; generating a list including their local police department; and shoving that list in their face.”