In Trinity Info Media, LLC, et al. v. Covalent, Inc., the Federal Circuit Court of Appeals (CAFC) held that the patent claims were directed to an abstract idea of “matching users who gave corresponding answers to polling questions.” As such, they do not involve an inventive concept under § 101 and are patent ineligible.  The holding itself is not surprising based on previous case law in this post-Alice world.  The precedential decision is noteworthy because it addresses claim construction in the context of a 12(b)(6) motion to dismiss a patent infringement lawsuit on § 101 grounds.  This blog reviews the CAFC’s decision and ends with a discussion of the following two topics:

  1. Could the invalidated claims have been written differently to avoid invalidation?
  2. How does the proposed Patent Eligibility Restoration Act of 2023 address the § 101 boondoggle created by the courts?


Trinity sued Covalent for patent infringement asserting two patents –  nos. 9,087,321 and 10, 946,685.   Both patents are directed to a poll-based networking system that connects users based on similarities as determined through poll answering while providing real-time results to the users.   The later patent contains additional disclosures discussing progressive polling for ecommerce systems.

Covalent filed a motion to dismiss Trinity’s amended complaint, arguing that the claims asserted against it are invalid under 35 U.S.C. § 101.  The District Court for the Central District of California agreed with Covalent, finding that the claims do not improve computer functionality but instead use “generic computer components as tools to perform the functions faster than a human would.”

Trinity appealed the decision to the Federal Circuit, arguing that the dismissal was improper because the district court did not conduct claim construction and discovery before analyzing the claims under § 101 according to the Alice framework  articulated by the U.S. Supreme Court in Alice Corp. v. CLS Bank, Intl.  Citing its previous decisions, the CAFC disagreed, explaining that “[a] patentee must do more than invoke a generic need for claim construction or discovery to avoid grant of a motion to dismiss under § 101.  Instead, the patent holder must “propose a specific claim construction or identify specific facts that need development and explain why those circumstances must be resolved before the scope of the claims can be understood for § 101 purposes.”   Slip opinion at 7. Because Trinity did not identify a proposed claim construction or specific facts to be discovered that would change its analysis, the CAFC proceeded with analyzing Trinity’s asserted claims under the Alice framework.

Step 1 of the Alice Framework – The Claims are Abstract

In finding that the asserted claims are abstract, the CAFC stated: “A telltale sign of abstraction is when the claimed functions are mental processes that can be performed in the human mind or using a pencil and paper.   For example, in SAP Am., Inc. v. InvestPIC, LLC, the CAFC previously held that “[s]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis . . . is all abstract.”   Slip opinion at 9.  Accordingly, Trinity’s independent claims are focused on “collecting information, analyzing it, and displaying certain results” which places them in the “familiar class of claims directed to patent ineligible material.”  Citing Elec. Power Group, LLC v. Alstom S.A., et al.  Slip opinion at 10.  Not surprisingly, the CAFC opined that “[a] human mind could review people’s answers to questions and identify matches based on those answers” and found that the independent claims of both patents are directed to an abstract idea.  As for the dependent claims, they merely add trivial variations of the abstract idea.

Trinity argued that “humans could not mentally engage in the same claimed process because “they could not perform ‘nanosecond comparisons and aggregate ‘result values with huge numbers of pools and members, nor could they select criteria using ‘servers, storage, identifiers, and/or thresholds.’” The CAFC noted that these arguments are not tethered to the asserted claims which do not require “nanosecond comparisons” or aggregating “huge numbers of pools and members.”   Slip opinion at 13.

In rejecting Trinity’s arguments, the CAFC cited its previous decisions where claims were found to be directed to a “forbidden” abstract idea when the claims required generic computer components or required operations that a human could not perform as quickly as a computer.   Moreover, Trinity’s claims relied on generic computing terms such as “data processing systems, processors, and memory.”   And even though Trinity emphasized the invention was intended for use with a hand-held device/mobile phone, such a device was viewed by the CAFC as being no different from a generic computer.  Slip opinion at 10.

Step 2 of the Alice Framework –  The Claim Elements Do Not Transform the Claim into a Patent-Eligible Claim

After finding that Trinity’s asserted claims are abstract, the Court proceeded with the second step of its Alice analysis. Here the CAFC concluded that the asserted claims do not ‘transform’ the claimed abstract idea into a patent-eligible claim.  In particular, the Court took issue with Trinity’s conclusory statements that the prior art did not include, “alone or in combination certain features, including (1) real-time matching based on progressive polling, (2) using match servers and a match aggregator, (3) using a mobile device, (4) displaying matches reviewable by swiping, and (5) using a mobile application. Under its precedent, the CAFC’s policy is to disregard conclusory statements under a Rule 12(b)(6) motion.  Slip opinion at 10.

The CAFC was left with viewing the claim limitations individually and in an ordered combination.  The Court concluded that the asserted claims do not add an inventive concept that would be “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.”  Trinity’s inventiveness arguments were found to merely reflect improved speed inherent with applying the abstract idea using a computer, or in this case a hand-held device.  Nor is there anything inventive in the ordered combination of elements because the asserted claims are organized in an expected was – receiving user information, asking the user questions, receiving answers, and identifying and displaying a match based on those answers.  Slip opinion at 18.  Nor did the CAFC find that the use of “multiple processors, match servers, unique identifications and/or match aggregator” transformed the abstract idea into an inventive concept in the application of an abstract idea.   The CAFC emphasized that has “ruled many times” that “invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept.” Id.


Could the Claims Have Been Written in Such a Way So as to Overcome the § 101 Rejection?

It is not surprising that Trinity’s patents were invalidated in our post-Alice patent invalidation environment.  This environment favors infringers who refuse to pay a licensing fee to patent owners and instead pursue patent invalidation through the courts or through administrative proceedings involving the Patent Trial and Appeal Board (PTAB).

Are all computer-based inventions at risk?  Is the current environment fair for patents that have passed the USPTO’s own strict requirements which are now based on judicial exceptions and case law?  For example, patent no. ‘321 was granted in 2015 or a short time after SCOTUS’s infamous holding in Alice Corp v. CLS Bank, Intl.  Patent no. ‘685 was granted in 2021 after the USPTO had developed its first § 101 guidance for its examiners in 2019.   But the CAFC found that both of Trinity’s patents were invalid under its case law involving its and the U.S. Supreme Court’s judicially-created exceptions.

The patents’ independent claims used the words “comparing” and “generating,” two words that are trigger points for the courts to find a § 101 problem.  Merely making conclusory statements that the method “is done on a computer/process” and therefore is done in the “human mind” will not overcome a § 101 rejection.   Under current case law, this is so even if the method could never be practically performed by the human mind.  That is, the courts have not cared if length of time required by a human to achieve the same results would totally defeat the invention’s utility.

Drafting claims for a computer-based invention is no easy task.  Here, the invention did not improve the functioning of a computer to overcome the § 101 rejection.   The § 101 issue in Trinity may have been avoided if the independent claims had been drafted to emphasize how the computer system’s method incorporated the unique ID or claimed just how the likelihood of a match is determined.  Both approaches would have required reciting the steps of an algorithm.

Unfortunately, even with these changes, it is likely that the CAFC would have reached the same conclusion.  The CAFC and other courts have routinely found ineligibility by finding that: 1) the claims are not directed to a technological improvement (slip opinion at 14); and/or 2) the invention merely uses generic computers components as tools to perform functions faster than a human would.  Slip opinion at 5.   Trinity’s inventions are not directed to a technological improvement of the generic computer’s functioning.   Also, given enough time, humans could perform the matching steps no matter how impractical the time commitment.

And this takes us to Congress’s attempt to correct what the judicially-created exceptions to patent eligibility under § 101 have done to thwart innovation, encourage infringement, and hurt the ability of U.S. companies to compete globally.

The Patent Eligibility Restoration Act of 2023 – How It May Fix the § 101 Invalidation Landscape

Thankfully, there is some relief on the horizon through the bipartisan efforts of Senators Thom Tillis and Chris Coons.  On June 22, 2023, these Senators introduced their Patent Eligibility Restoration Act of 2023. This legislation is intended to bring clarity to U.S. patent law by eliminating many of the judicial exceptions to patent eligibility and providing clear guidance on determining patent eligibility especially in areas such as medical diagnostics, biotechnology, personalized medicine, AI, 5G, and blockchain.  The proposed legislation states that the following inventions shall not be eligible for patent prosecution:

  • A mathematical formula that is not part of an invention comprising a useful process, machine, manufacture, or composition of matter;
  • A mental process performed solely in the mind of a human being;
  • An unmodified gene, as that gene exists in the human body;
  • An unmodified natural material, as that material exists in nature; and
  • A process that is substantially economic, financial, business, social, cultural, or artistic.

However, the legislation includes an important exception:

The processes described in 5 above shall not be excluded from eligibility for a patent if the process cannot be practically performed without the use of a machine (including a computer) or manufacturer. 

The legislation is intended to stop the courts from invalidating patents under § 101 while ignoring the elements of the claimed invention and/or treating them as conventional.  If enacted, the eligibility focus by the USPTO and the courts will be far more focused on the patentability factors involving sections 102 (novelty), 103 (non-obviousness), and 112 (definiteness) of the Patent Act which in the commentator’s opinion is where the focus should be.

Perhaps had this legislation already been in place, Trinity’s patents would not have been invalidated because the invention clearly cannot be practically performed without a computer.   On the other hand, one factor that will likely be litigated with the new legislation is what exactly constitutes “practically performed.”  Regardless, this legislation is a huge step forward, something that has been needed for a long time as the courts have effectively taken over Congress’s patent law regulatory role through judicially-created law.

Have a question on obtaining a U.S. or foreign patent or enforcing your rights as a patent owner? Contact us at 305-279-4740.  And be sure to check out our other patent law blogs at www.troyandschwartzlaw.com.



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