In-Store Product Locator Patents found Ineligible as Abstract by Federal Circuit

In-Store Product Locator Patents found Ineligible as Abstract by Federal Circuit

Improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality, the Federal Circuit held.

The U.S. Court of Appeals for the Federal Circuit (CAFC) confirmed a district court’s summary judgement that the Innovaport LLC-owned six patents are invalid for claiming ineligible subject matter under 35 U.S.C. § 101. The patents, which are directed to systems and methods for providing in-store location information, claimed an abstract idea without adding a sufficient inventive concept to make them patent-eligible, the Federal Circuit agreed.

Originally, Innovaport LLC filed a suit against Target Corporation in the US District Court for the Western District of Wisconsin alleging that Target’s systems trespassed 55 claims of the U.S. Patent numbers 8775260, 8787933, 9489690, 9990670, 7231380, and 7819315. The patented technology was intended to solve the common problem of shoppers struggling to locate desired goods in large retail stores. The patents’ specification criticized existing solutions like in-store signs, which it reportedly described as being “difficult to read” and limited in the amount of information they could convey. The ‘considerable disadvantages’ of asking store employees for help were also noted by the patents explaining that “store employees are not always able to provide clear instructions and, indeed, frequently do not themselves know where various products are located”.

Systems and methods that use a central hub, databases and user interfaces to provide shoppers with not just product location but also product quantity, price and availability were claimed by patents at issue. Linking products in a “cross-referential manner” to provide customers with suggestions and promotional information, sometimes for products they had not specially requested was a key feature.

Judge William M Conley granted Target’s motion for summary judgement of invalidity in the district court proceedings. The asserted claims were reportedly directed to the abstract idea of “collecting, analyzing, retrieving, and displaying information”. Then Innovaport appealed to the Federal Circuit, arguing that the lower court had misused the Supreme Court’s two-step Alice/Mayo framework for deciding patent eligibility.

Writing for the Federal Circuit, Judge Cunningham, addressed Innovaport’s arguments under both steps of the Alice test. At the first step that asks whether the claims are directed to a patent-ineligible concept, the Federal Circuit agreed with the district court’s characterization of the claims. The opinion read that the claimed functions are reportedly mental processes that “can be performed in the human mind or using a pencil and paper”. The court provided an analogy of a human store clerk who could reportedly “receive a question from a customer regarding where a product is, use a catalog to determine where that product is, tell a customer where that product is, and give that customer a suggestion of another product location based on past inquiries from the customer”.

Innovaport had argued that its claims were not abstract as they were directed to a specific technical improvement and the Federal Circuit was not persuaded by this argument. The court reportedly stated that “improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality”. The patents focused on solving a business problem using generic computer technology as a tool, rather than on improving computer capabilities; the opinion concluded. Linking related products and providing suggestions based on a user’s history are “longstanding methods of human activity,” the decision reportedly noted.

With regards to the second step of the Alice analysis, the Federal Circuit looked for an “inventive concept” adequate to “transform the nature of the claim” into a patent-eligible application. The inventive concept was found in the combination of linking products, providing suggestions and using a mobile device, Innovaport argued, which was rejected by the court. The act of “linking” products and providing recommendations was the abstract idea itself and an abstract idea cannot serve as its own inventive concept, the court explained. Furthermore, the court found that a “mobile device’s” recitation was the inclusion of a “generic computer” component, which under Supreme Court precedent in Alice “cannot transform a patent-ineligible abstract idea into a patent-eligible invention”.

No inventive concept was found in the “ordered combination of limitations” by the Federal Circuit which concluded that the claims recited “routine business steps, implemented on a computer,” and did not improve the way a computer functions.