Opinion
CIVIL ACTION NO. 2:21-CV-00445-JRG
2022-04-14
MILLER MENDEL, INC., Plaintiff, v. CITY OF ANNA, TEXAS, Defendant.
Kurt M. Rylander, Rylander & Associates PC, Vancouver, WA, Elizabeth L. DeRieux, Sidney Calvin Capshaw, III, Capshaw DeRieux LLP, Gladewater, TX, for Plaintiff. Kevin Michael Curley, Messer, Fort, McDonald, PLLC, Frisco, TX, Douglas J. Sorocco, Evan W. Talley, Dunlap Codding, P.C., Oklahoma City, OK, for Defendant.
Kurt M. Rylander, Rylander & Associates PC, Vancouver, WA, Elizabeth L. DeRieux, Sidney Calvin Capshaw, III, Capshaw DeRieux LLP, Gladewater, TX, for Plaintiff.
Kevin Michael Curley, Messer, Fort, McDonald, PLLC, Frisco, TX, Douglas J. Sorocco, Evan W. Talley, Dunlap Codding, P.C., Oklahoma City, OK, for Defendant.
ORDER
RODNEY GILSTRAP, UNITED STATES DISTRICT JUDGE
Before the Court is the Motion for Judgment on the Pleadings Pursuant to Federal Rule of Civil Procedure 12(c) and 35 U.S.C. § 101 (the "Motion") filed by Defendant City of Anna, Texas (the "City") on February 15, 2022. (Dkt. No. 16.) In the Motion, the City seeks judgment on the pleadings that the subject matter of U.S. Patent No. 10,043,188 (the "’188 Patent") is ineligible for patent protection under 35 U.S.C. § 101. (Id. at 1–2.)
I. BACKGROUND
a. Procedural History
Plaintiff Miller Mendel, Inc. ("Miller Mendel") filed a Complaint on December 2, 2021 alleging infringement of "at least Claims 1, 5, and 15" of the ’188 Patent by the City and the Anna Police Department. (Dkt. No. 1.) Miller Mendel alleges that the City, "by and through its authorized agency the Anna Police Department," uses the "Guardian Alliance Technologies investigation software platform" (the "Guardian Platform") and infringes the ’188 Patent through use of the Guardian Platform "on a computing device with a processor and system memory[ to assist] an investigator in conducting a background investigation of an application within an organization." (Dkt. No. 21, ¶ 12.)
An Amended Complaint was filed on February 22, 2022 removing the Anna Police Department as a named defendant. (Dkt. No. 21; see also Dkt. Nos. 13, 22, 32.)
Miller Mendel has filed several lawsuits throughout the country alleging that customers of Guardian Alliance Technologies ("GAT") infringe the same claims of the ’188 Patent. (Dkt. No. 16 at 1–2.) In October 2018, Miller Mendel sued the City of Oklahoma City in the Western District of Oklahoma (the "Oklahoma Action"). (Id. ; see also Case. No. CIV-18-990-JD (W.D. Okla.).) In the Oklahoma Action, the defendant filed a § 101 motion that was denied based on factual disputes pending claim construction. (Dkt. No. 16 at 1; see also Case. No. CIV-18-990-JD, Dkt. No. 32 (W.D. Okla.).) Claim construction in the Oklahoma Action was fully briefed as of May 10, 2021, a Markman hearing has not been scheduled, and a claim construction order has not yet issued. (See, e.g. , Dkt. No. 16 at 1; see also Dkt. No. 24 at 3; Case. No. CIV-18-990-JD, Dkt. No. 122 (W.D. Okla.).) In February 2021, Miller Mendel filed an infringement suit against Washington County, Oregon (the "Oregon Action") (Case No. 3:21-cv-00168-SB (D. Ore.)) and in May 2021, Miller Mendel sued the State of Alaska (the "Alaska Action") (Case No. 3:21-cv-00129-HRN (D. Alaska)). (Dkt. No. 16 at 1.) Both the Oregon Action and the Alaska Action have been stayed pending the outcome of the Oklahoma Action. (Id. at 1–2.) In all pending actions filed by Miller Mendel against GAT customers, "GAT is contractually obligated to defend and indemnify Miller Mendel's claims for patent infringement." (Id. at 7.)
b. The ’188 Patent
The ’188 Patent is entitled "Background Investigation Management Service" and was issued on August 7, 2018. The ’188 Patent is directed to a "software system for managing the process of performing pre-employment background investigations." ( ’188 Patent at 3:66–4:2.) The ’188 Patent describes a "software system 100 [that] allows an organization 102 the ability to create and customize electronic documents 104 to be sent to applicants to complete via the software system 100, and returned to the software system 100 in similar fashion." (Id. at 4:5–9.)
The specification notes that the "system 100 automates the majority of the tasks of a common pre-employment background investigation so that fewer hardcopy documents are necessary, thus creating more efficient management of individual background investigations." (Id. at 4:12–16.) The system also "automatically processes information entered in the documents to save organizations time and allow quicker turnaround of the background investigation." (Id. at 4:33–36.) The "technical functions and features" of the system are "initiated when a remote terminal communicates with a central computer (server) via the Internet or other network." (Id. at 4:41–44.) Claim 1 of the ’188 Patent reads as follows:
The parties agree that Claim 1 of the ’188 Patent is representative of the asserted claims. (Dkt. No. 16 at 9, n.1; Dkt. No. 24 at 4.) The Court finds that Claim 1 is representative of Claim 5, which merely claims a "non-transitory computer-readable medium" with instructions for performing the method of Claim 1. Claim 1 is also representative of Claim 15, which merely broadens the "applicant residential address" recited in the final limitation of Claim 1 to include an "applicant current residential address, an applicant past address, and a reference source address." Such a distinction is immaterial to the patent eligibility analysis of the claims of the ’188 Patent. Content Extraction and Transmission LLC v. Wells Fargo Bank , 776 F.3d 1343, 1348 (Fed. Cir. 2014).
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, comprising the steps of:
receiving a first set of program data comprising information identifying the applicant, the position, the first organization, and the investigator;
storing a new applicant entry in the system memory, the new applicant entry associated with the first set of program data;
transmitting an applicant hyperlink to an applicant email address associated with the applicant, the applicant hyperlink for viewing an applicant set of electronic documents;
receiving an applicant electronic response with a reference set of program data, wherein the reference set of program data comprises information regarding a reference source, wherein the reference source is a person, the program data including a reference email address associated with the reference source;
determining a reference class of the reference source based on the reference set of program data;
selecting a reference set of electronic documents based on the reference class of the reference source;
transmitting a reference hyperlink to the reference email address, the reference
hyperlink for viewing the reference set of electronic documents;
receiving a reference electronic response to the reference set of electronic documents from the reference source;
storing the reference electronic response in the system memory, associating the reference electronic response with the new applicant entry; and
generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address.
( ’188 Patent at Claim 1.)
The parties agree that during prosecution of the ’188 Patent, "the examiner rejected all pending claims under Section 101 as patent ineligible[.]" (Dkt. No. 24 at 3; see also Dkt. No. 16 at 10–11 (noting that the "patent examiner found that the proposed claims fall under the abstract concept of ‘Fundamental Economic Practices.’ ").) Miller Mendel contends that to counter that rejection, the applicant pointed to the step of Claim 1 that recites "generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address." (Id. at 3–4.) The specification of the ’188 Patent refers to this feature as the "Address Locator," which "will retrieve law enforcement and court names, addresses and phone numbers for a pre-defined radius around the applicant's past and current addresses, and those addresses of the applicant's employer's [sic ] and relatives." ( ’188 Patent at 9:48–53.) Specifically:
The system does this by taking the address information the applicant provided on questionnaires he or she submitted to the organization via the software system. The system then conducts a search using an Internet search engine for agencies and courts around the selected address. A list of agencies and courts is presented to the user at which time the organization user selects which agencies and courts the organization will send reference letters and requests for records checks to. The user can also edit the address in case of any system mistake.
(Id. at 9:54–62.)
The City also points out that, in response to the § 101 rejection, the applicant argued that the examiner's rejection was incorrect because the examiner "failed to expressly support the necessary underlying fact determinations to reach such a conclusion, as required by Patent Office guidelines then in effect for a § 101 rejection, namely: (1) a citation to an express statement by applicant; (2) a court decision finding similar claim language ineligible; (3) a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s); or (4) a statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s)." (Id. at 11) (quotations omitted). The claims were subsequently allowed. (Id. ) II. LEGAL STANDARD
In reviewing the prosecution history of the ’188 Patent, the Court notes that both the applicant and the examiner conflated the analysis under 35 U.S.C. § 101 with the analysis under 35 U.S.C. §§ 102 and 103, and the Court further notes that the examiner did not provide any specific analysis in the Notice of Allowance regarding § 101. (See, e.g. , April 26, 2018 Amendment/Reply to Non-Final Office Action at 9 ("The Examiner tentatively agreed that if claims are allowable over the prior art – that is, there are no novelty and obviousness rejections on those claims, then the claims represent ‘something more’ than a mere abstract idea and are patentable."); id. at 12 ("Since the claims are patentable over the prior art, they are inventive and therefor ‘something more’ than an abstract concept."); see also Notice of Allowability at 2 ("[T]he Examiner finds the claimed invention to be patentably distinct from the prior art of records [sic ]."); id. at 3 ("Applicant's arguments filed 4/26/2018 have been considered and found persuasive.").)
a. Rule 12(c)
After the pleadings are closed, but early enough not to delay trial, a party may move for judgment on the pleadings. Fed. R. Civ. P. 12(c). "The standard for deciding a Rule 12(c) motion is the same as a Rule 12(b)(6) motion to dismiss ... [t]he plaintiff must plead ‘enough facts to state a claim for relief that is plausible on its face.’ " Guidry v. American Public Life Ins. Co. , 512 F.3d 177, 180 (5th Cir. 2007) (quoting Bell Atl. Corp. v. Twombly , 550 U.S. 544, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). In a patent case, the Federal Circuit reviews procedural aspects of motions for judgment on the pleadings using regional circuit law. RecogniCorp, LLC v. Nintendo Co., Ltd. , 855 F.3d 1322, 1325–26 (Fed. Cir. 2017).
b. Patent Eligibility
Anyone who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" may obtain a patent. 35 U.S.C. § 101. Since patent protection does not extend to claims that monopolize the "building blocks of human ingenuity," claims directed to laws of nature, natural phenomena, and abstract ideas are not patent eligible. Alice Corp. Pty. v. CLS Bank Int'l , 573 U.S. 208, 134 S. Ct. 2347, 2354, 189 L.Ed.2d 296 (2014). The Supreme Court instructs courts to distinguish between claims that set forth patent-ineligible subject matter and those that "integrate the building blocks into something more." ( Id. )
First, the court "determine[s] whether the claims at issue are directed to a patent-ineligible concept." ( Id. at 2355.) In doing so, the court must be wary not to overgeneralize the invention, as "all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." ( Id. at 2354 ) (omission in original). In other words, the court must distinguish between "ineligible ‘abstract-idea-based solution[s] implemented with generic technical components in a conventional way’ from the eligible ‘technology-based solution’ and [a] ‘software-based invention[ ] that improve[s] the performance of the computer system itself.’ " Amdocs (Israel) Ltd. v. Openet Telecom, Inc. , 841 F.3d 1288, 1299 (Fed. Cir. 2016) (quoting Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC , 827 F.3d 1341, 1351 (Fed. Cir. 2016) ) (alteration in original).
If the challenged claims recite a patent-ineligible concept, the court then "consider[s] the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent eligible application." Alice , 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566 U.S. 66, 78–79, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) ). This step is satisfied when the claim limitations "involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’ " Content Extraction , 776 F.3d at 1347–48 (quoting Alice , 134 S. Ct. at 2359 ). The Federal Circuit has explained that "[w]hile the ultimate determination of eligibility under § 101 is a question of law, like many legal questions, there can be subsidiary fact questions which must be resolved en route to the ultimate legal determination." Aatrix Software, Inc. v. Green Shades Software, Inc. , 882 F.3d 1121, 1128 (Fed. Cir. 2018). As such, "[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact" that must be "proven by clear and convincing evidence." Berkheimer v. HP Inc. , 881 F.3d 1360, 1368 (Fed. Cir. 2018).
Something is not necessarily well-understood, routine, and conventional simply because it is disclosed in a prior art reference. Exergen Corp. v. Kaz USA, Inc. , 725 F. Appx 959, 965 (Fed. Cir. 2018). There are many obscure references that may qualify as prior art but are insufficient to establish something is a "well-understood, routine, and conventional activity previously engaged in by [those] who work in the field." Mayo , 566 U.S. at 79, 132 S.Ct. 1289. Additionally, specific improvements described in a patent specification, "to the extent they are captured in the claims, create a factual dispute regarding whether the invention describes well-understood, routine, and conventional activities." Berkheimer , 881 F.3d at 1369. However, "[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed combination is well understood, routine, conventional to a skilled artisan in the relevant field, [patent eligibility] can be decided ... as a matter of law." ( Id. at 1368.)
III. DISCUSSION
a. The Claims of the ’188 Patent are Directed to an Abstract Idea
In the first step of the patent eligibility analysis, the court "determine[s] whether the claims at issue are directed to a patent-ineligible concept." Alice , 134 S. Ct. at 2355. "If not, the claims pass muster under § 101." Ultramercial, Inc. v. Hulu, LLC , 772 F.3d 709, 714 (Fed. Cir. 2014). In making this determination, the court looks at what the claims cover. See id. ("We first examine the claims because claims are the definition of what a patent is intended to cover."). "[T]he ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification," and asks "whether ‘their character as a whole is directed to excluded subject matter.’ " Enfish, LLC v. Microsoft Corp. , 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc. , 790 F.3d 1343, 1346 (Fed. Cir. 2015) ).
The City contends that "[p]erforming background checks and collecting information from references is an abstract idea because the process is one that has historically been performed by hand using paper." (Dkt. No. 16 at 18.) The City also argues that the ’188 Patent ’s "supposed improvement over the manual method is performing these tasks with an automated system, thereby helping a background investigator more efficiently and effectively conduct a background investigation." (Id. at 18–19) (quotations omitted). Another purported technical advance of the ’188 Patent is to "generat[e] a suggested reference list of one or more law enforcement agencies based on an applicant residential address." (Id. at 20 (quoting ’188 Patent at Claim 1).) According to the City, this "requires no specific improvement in computer capabilities, nor does it add any technological improvements to" the "time-honored" method of using "an applicant's residential address to determine which local law enforcement agencies to search." (Dkt. No. 16 at 20 (quoting ’188 Patent at 9:53–57 ("The system does this by taking the address information the applicant provided on questionnaires he or she submitted to the organization via the software system. The system then conducts a search using an Internet search engine for agencies and courts around the selected address.")).) The City further contends that the "claim requires no particular way of conducting the background investigation" aside from the general steps of (1) "transmitting a job application and related documents to a job applicant," (2) "collecting information from the applicant (including a list of character references)" (3) "transmitting a request for information to the character references, and" (4) "collecting and storing information from the character references." (Dkt. No. 16 at 2, 20.)
The City compares Claim 1 of the ’188 Patent to the claim found patent ineligible in SkillSurvey, Inc. v. Checkster LLC , 178 F. Supp. 3d 247, 256 (E.D. Pa. 2016), aff'd , 683 F. Appx 930 (Fed. Cir. 2017). There, the court "held that claims directed to a system and method of collecting and analyzing information from references identified by job candidates were invalid under § 101 for claiming an abstract idea implemented with generic computer equipment." (Dkt. No. 16 at 21 (citing SkillSurvey , 178 F. Supp. 3d at 255–60 ).) The claims at issue in SkillSurvey recited a "computer-implemented method that sets up initial job specific survey questions for an applicant's references, connects with the references, collects the survey data provided by the references, anonymizes the survey data, analyzes the survey data, and generates reports for the hiring manager," including "statistical scores for the applicant in competency skill groups." (Dkt. No. 16 at 21 (citing SkillSurvey , 178 F. Supp. 3d at 253 ).) The SkillSurvey court found that the claims, "alone and in combination, could all be completed by the human mind," albeit less efficiently than on a computer. (Dkt. No. 16 at 21 (citing SkillSurvey , 178 F. Supp. 3d at 256 ).)
In response, Miller Mendel argues that the ’188 Patent was allowed "after the decision in Alice , so the USPTO is presumed to have taken Alice into consideration when allowing the claims" and, in fact, "expressly considered" § 101 during prosecution. (Dkt. No. 24 at 6–7) (emphasis in original). Miller Mendel argues that since the "focus of the claimed advance over the prior art" is used to determine whether the claim is directed to an abstract idea (id. at 11) (quoting Affinity Labs of Texas, LLC v. DirecTV, LLC , 838 F.3d 1253, 1257 (Fed. Cir. 2016) ), the focus of a method claim should be on the "gerund phrases" of the claim (Dkt. No. 24 at 12). Miller Mendel does not cite to any case law that endorses this "gerund phrases" approach. (See generally Dkt. No. 24; see also Dkt. No. 27 at 5.) Using this methodology, Miller Mendel concludes that the claim is directed to a method that "receives [an] applicant's information and based on that information, the method determines a reference type and transmit [sic ] a link to that reference with a questionnaire. The method then store[s] the response and generates [a] reference list of law agencies." (Id. at 14.) Miller Mendel concedes that during prosecution, the examiner found that the limitation directed to "selecting a reference set of electronic documents based on the reference class of the reference source" was "an abstract concept, specifically of the mental steps type." (Id. )
Miller Mendel contends that "Prong Two of the first step of the Alice analysis as called for in MPEP 2106.04.II.2" requires an evaluation as to "whether the claim recites additional elements that integrate the exception into a practical application of that exception." (Id. at 15.) According to Miller Mendel, the examiner never evaluated said second "prong" of Alice Step One. (Id. ) To satisfy this "additional element," Miller Mendel points to the limitation "generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address," which, according to Miller Mendel, is "not inherent in the concept of background searches on job applications, nor is it inherent in collecting information on an applicant from a reference." (Id. at 15–16.) Miller Mendel emphasizes that the reference list is generated "based on an applicant residential address," because there are "other ways of generating a reference list other than residential address, such as asking the applicant to list the law enforcement agencies the applicant may have previously worked." (Id. at 16.)
The City responds that Miller Mendel's "gerund phrase" methodology "ignores conventional methods of analyzing patent claims under Alice " and is not supported by any court or decision. (Dkt. No. 27 at 5.) The City notes that Miller Mendel relies on Electric Power to support the "gerund phrase" approach, but argues that Electric Power found that the "focus" of the patent claims was "not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools." (Id. at 5 (quoting Electric Power Group, LLC v. Alstom, S.A. , 830 F.3d 1350, 1351–54 (Fed. Cir. 2016) ).)
The City further argues that even under Miller Mendel's "novel gerund phrase" analysis, the claims of the ’188 Patent do not "recite[ ] additional elements that integrate the exception into a practical application of that exception." (Dkt. No. 27 at 7 (citing Dkt. No. 24 at 15).) Specifically, the City contends that the limitation requiring generation of a list of law enforcement agencies based on an applicant's residential address "is nothing more than an extra-solution activity (i.e. , the identification of a particular source of information to be queried) and does not, therefore, bestow subject matter eligibility on the claims of the ’188 Patent." (Dkt. No. 27 at 7–8; see also id. at 8 ("The term ‘extra solution activity’ can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim.").) The City quotes British Telecommunications for the proposition that "there is nothing inventive about the generation and transmission of a list of information sources based on user location." (Dkt. No. 27 at 8 (quoting Brit. Telecomm. PLC v. IAC/InterActiveCorp , 381 F. Supp. 3d 293, 313 (D. Del. 2019), aff'd , 813 F. Appx 584 (Fed. Cir. 2020) ).) According to the City, "generating a reference list based on applicant's residential addresses does not provide any meaningful limitation to the abstract idea of conducting background investigations." (Dkt. No. 27 at 8–9 (citing OIP Techs., Inc. v. Amazon.com, Inc. , 788 F.3d 1359 (Fed. Cir. 2015) ).)
After considering the above, the Court finds that the ’188 Patent and its claims do not purport to solve any technical problem associated with prior art products or methods. Instead, the ’188 Patent provides a "system for managing the process of performing pre-employment background investigations" to "save organizations time and other costly resources." ( ’188 Patent at 3:67–4:40.) Put another way, the "subject matter turns much of a common pre-employment background investigation electronic, so that fewer hardcopy documents are necessary, thus creating more efficient management of individual background investigations." (Id. at Abstract.) The Court finds such to be an abstract idea directed toward automation of basic information gathering and organization.
The claims of the ’188 Patent are structurally similar to those declared patent-ineligible in SkillSurvey . There, the patent (the " SkillSurvey patent") was directed to "a human resource management system, and more particularly to a system for collecting and analyzing information from references identified by job candidates." SkillSurvey , 178 F. Supp. 3d at 252. Like the ’188 Patent, the SkillSurvey patent included a "candidate database that stores survey data," a "collection module" that "sends an electronic communication to the reference providers requesting them to complete the survey questions," preferably through an internet link, and an "analysis module" that "combines the received survey data from the reference providers and generates a candidate report." ( Id. ) Also like the ’188 Patent, the stated purpose of the SkillSurvey patent was to make reference checks "less costly" and "substantially automated." ( Id. ) One claim of the SkillSurvey patent expressly required a "specialize[d] computer machine with a non-transient memory having at least one region for storing particular computer executable program code" and "at least one processor" for executing such code. ( Id. at 253.)
The court in SkillSurvey found that the patent was "trying to achieve" the "abstract idea of reference checking job applicants" and that the "heart" of the patent was the "abstract idea of anonymously surveying prior employers within the context of job applications." ( Id. at 255 ) (citations omitted). The court determined that the claims of the SkillSurvey patent, "alone and in combination, could all be completed by the human mind. A pen and paper version of the claimed method would not be particularly efficient, but it could be completed." ( Id. at 256.) For the same reason as the claims at issue in SkillSurvey , the Court finds that the claims of the ’188 Patent are directed to an abstract idea.
The Court is not persuaded by Miller Mendel's argument that the concept of "generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address" is an "additional element" that renders the claims of the ’188 Patent non-abstract. (Dkt. No. 24 at 15–16.) Although the ’188 Patent mentions, inter alia , computers, servers, mobile phones, and personal headset devices, the claims and specification lack any disclosure or limitation that indicates a technical improvement of any such components. Figure 62, below, depicts the "example computing device 700" that may be used to implement the claimed system. ( ’188 Patent at 12:43–50 ("In a very basic configuration 701, computing device 700 typically includes one or more processors 710 and system memory 720.").) The ’188 Patent places no limits on the type or structure of components that are used in the system. (See, e.g. , ’188 Patent at 12:51–52 ("[P]rocessor 710 can be of any type ..."); 12:63–64 ("[M]emory 720 can be of any type ..."); 13:40–41 ("Any such computer storage media can be part of device 700.").) (Id. at FIG. 62.) Nor does the ’188 Patent describe how it accomplishes any of the claimed functionalities beyond the recitation that "[e]ach of the following components and features may be implemented using software methods and processes executing on one or more computing systems[.]" (Id. at 5:7–10; see also id. at 14:21–24 ("[I]t should be appreciated that these steps may be performed in any random order and the process 800 is not defined by this particular illustrative order.").) The claim language is "entirely result-oriented, describing various operations ... without explaining how to accomplish any of the tasks." IBM v. Zillow Grp., Inc. , 549 F. Supp. 3d 1247, 1263 (W.D. Wa. 2021) (finding claims directed to "selecting, identifying, matching, re-matching, applying, determining, displaying, receiving, and rearranging" patent-ineligible).
In sum, the Court finds that the ’188 Patent is directed to an abstract idea under Alice Step One—the abstract idea of performing a background check.
b. The Claims of the ’188 Patent Do Not Recite Any Inventive Concept
Having found that the claims of the ’188 Patent are directed to an abstract idea, the Court now turns to Step Two of Alice , which involves a determination of whether the elements of the invention involve "well-understood, routine, [and] conventional activities previously known to the industry." See, e.g., Content Extraction , 776 F.3d at 1347–48 (quoting Alice , 134 S. Ct. at 2359 ). Alice Step Two involves questions of fact. Aatrix Software, Inc. v. Green Shades Software, Inc. , 882 F.3d 1121, 1128 (Fed. Cir. 2018).
The City argues that the claims of the ’188 Patent are "invalid under § 101 for failing to contain an inventive step pursuant to the second step of the Alice test for statutory subject matter." (Dkt. No. 16 at 22.) The relevant question at this juncture is "whether the claims here do more than simply instruct the practitioner to implement the abstract idea on a generic computer." Alice , 134 S. Ct. at 2359. The City argues that the claims of the ’188 Patent "invoke only generic computer components, such as a computing device with a processor and a system memory." (Dkt. No. 16 at 23 (citing ’188 Patent at 15:52–53).) The City further contends that the steps of the ’188 Patent are traditionally performed when conducting a "conventional and well-known background investigation" and are merely "manual tasks" that "cannot be rendered patent-eligible merely by performing them with a computer." (Dkt. No. 16 at 23–24 (citing Apple, Inc. v. Ameranth, Inc. , 842 F.3d 1229, 1244 (Fed. Cir. 2016) ).) According to the City, the "claims of the ’188 Patent make plain[ that] the use of a computer is a straightforward substitute for human effort and merely automates the performance of collecting and storing the information necessary for a background investigation." (Dkt. No. 16 at 24.)
As to the claimed step of "generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address," the City contends that such is not an "inventive concept capable of saving the claims" from ineligibility. (Id. at 24–25.) The City argues that "background investigators have previously developed lists of law enforcement agencies to contact during background investigations based on a residential address of the applicant" because a "residential address is a logical place for such an investigation to begin." (Id. at 25.) The use of a general-purpose computer to generate a list of law enforcement agencies near a residential address is no different, according to the City, than "an investigator manually completing the same step" by "looking at a map of law enforcement agencies and comparing it to a residential address." (Id. at 25–26.) The City alleges that reference materials have long existed to serve such a purpose, such as the website https://www.usacops.com or the National Directory of Law Enforcement. (Id. at 27.)
Miller Mendel responds that the Court should "scrutinize not what a patent claim's subject matter is but how the patent's claims achieve their professed goal[.]" (Dkt. No. 24 at 17 (citing Electric Power Group , 830 F.3d at 1355 ).) Along with the "generating a suggested reference list ..." step discussed supra , Miller Mendel points to the step reciting "storing the reference electronic response in the system memory, [and] associating the reference electronic response with the new applicant entry" as providing the requisite "inventive concept" to transform the claims of the ’188 Patent into patent-eligible subject matter. (Dkt. No. 24 at 17.) Miller Mendel argues that the patent examiner found the claims to be allowable because "the prior art failed to teach" such limitations. (Id. at 18.) According to Miller Mendel, the examiner's finding shows that the limitations of "associating the reference electronic response with the new applicant entry" and "generating a suggested reference list of one [or] more law enforcement agencies based on an applicant residential address" were "not well-understood, routine or conventional at the time of the invention." (Id. ) Miller Mendel argues that the City's evidence that such limitations were known—in the form of a declaration from the GAT founder—is irrelevant because it referenced background investigation techniques from 2015, which is later than the application for the ’188 Patent in 2012 or the 2011 provisional application on which it depends. (Id. at 18–19.) In response, the City first argues that this Court owes no deference to the findings of the patent examiner. (Dkt. No. 27 at 10 (citing Quad Environmental Technologies Corp. v. Union Sanitary Dist. , 946 F.2d 870, 876 (Fed. Cir. 1991) ).) The City also argues that "an Alice inquiry is not constrained by what is known in the prior art; rather, it looks at what has been done or is capable of being done by the mind, and as the specification of the ’188 Patent teaches, background investigations were routine processes within law enforcement agencies." (Dkt. No. 27 at 10.) The City contends that "[s]electing an information source based on the proximity to an applicant's residential address(es) is a mental step capable of being carried out by a mental process in combination with a telephone book, law enforcement directory, or reverse lookup" without the use of "specialized computer software, technology, or tools[.]" (Id. ) In response, Miller Mendel again argues that the examiner "found the claimed invention to be patentably distinct from the prior art of record." (Dkt. No. 30 at 4.)
Miller Mendel also argues that the City's Motion goes "well beyond" the pleadings allowed under Rule 12(c). (Id. at 5–6.) The City contends that the Court can determine that the ’188 Patent is directed to ineligible subject matter without reference to any of the declarations or exhibits attached to its Motion. (Dkt. No. 27 at 4.) Notwithstanding such disagreement, the Court finds that it reaches the same conclusions and result, both when it does and when it does not consider the declarations or exhibits attached to the City's Motion.
Miller Mendel's focus on novelty and non-obviousness is misplaced. As noted earlier, Miller Mendel once again conflates the analysis of whether the ’188 Patent is directed to eligible subject matter under § 101 with whether it meets §§ 102 and 103 ’s novelty requirements. See generally In re TLI Commc'ns LLC Patent Litigation , 87 F.Supp.3d 773, 786 (E.D. Va. 2015). The Supreme Court has unequivocally stated that such inquiries are separate and distinct. Diamond v. Diehr , 450 U.S. 175, 101 S. Ct. 1048, 1058, 67 L.Ed.2d 155 (1981) ("The question therefore of whether a particular invention is novel is wholly apart from whether the invention falls into a category of statutory subject matter."). In reaching this conclusion, the Supreme Court emphasized that the § 101 inquiry is distinct from other "[s]pecific conditions of patentability" including " § 102 [which] covers in detail the conditions relating to novelty." ( Id. ) Thus, any argument regarding the alleged novelty or non-obviousness of the ’188 Patent has little, if any, relevance in determining whether the ’188 Patent is directed to patent-ineligible subject matter.
Moreover, Miller Mendel's purported improvement over the prior art is "the alleged efficiency of the method through computerization," which is not enough to confer patent eligibility. SkillSurvey , 178 F. Supp. 3d at 258. The computer and internet technologies described in the ’188 Patent are generic, and requiring the use of generic computer technology does not create an inventive concept. Alice , 134 S. Ct. at 2358. As in SkillSurvey , "the addition of computerization to the abstract concept of reference checking does not add an inventive concept." SkillSurvey , 178 F. Supp. 3d at 258 ("It is inarguable that using computer technology would necessarily make the claimed method more efficient. However, adding efficiency to a long-standing process through computerization also does not render an abstract idea patentable.") Additionally, "the problem being solved by the use of computer technology does not solve a specific computing problem." ( Id. ) Instead, issues associated with background checks "remain from an increasingly distant ‘pre-Internet world.’ " ( Id. at 258–259.)
The Court concludes that none of the limitations add inventiveness to the abstract idea. The limitation reciting "associating the reference electronic response with the new applicant entry" is simply directed to matching a survey response with the correct applicant. However, "[s]electing files based on identifiers and matching different files/identifiers is just what computers do. There is nothing inventive about it." Intellectual Ventures I LLC v. Erie Indem. Co. , 200 F. Supp. 3d 565, 577 (W.D. Pa. 2016) ; see also Jedi Technologies, Inc. v. Spark Networks, Inc. , 2017 WL 3315279, at *9 (D. Del. Aug. 3, 2017) (The patent is "directed toward the abstract idea of matching people based on certain criteria."); Voip-Pal.Com, Inc. v. Apple Inc. , 375 F. Supp. 3d 1110, 1136 (N.D. Cal. 2019) ("The Court finds that none of the claim's elements, assessed individually, provides an inventive concept. Claim 1 discloses: (1) receiving a caller identifier and a callee identifier after a call is initiated; (2) locating a caller dialing profile; (3) matching the information in the caller dialing profile with information in the callee identifier; and (4) classifying the call either as a public network call or a private network call based on classification criteria and producing the appropriate public network or private network routing message to be received by a call controller.").
The same is true for the limitation requiring "generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address." Based on the applicant's address, the claimed system of the ’188 Patent generates an internet search to find law enforcement agencies near that address, which the investigator can then call or otherwise contact using the system's email feature. This is no different than finding an applicant's address on a map and locating the closest law enforcement agencies on that map—the claimed method simply performs this step on a computer using the internet. Stating an abstract idea "while adding the words ‘apply it’ is not enough for patent eligibility." Alice , 134 S. Ct. at 2359 (quoting Mayo , 132 S. Ct. at 1289 ); see also Jedi Technologies , 2017 WL 3315279, at *9 (The patent is "directed toward the abstract idea of matching people based on certain criteria."). "There is nothing inventive about the generation and transmission of a list of information sources based on user location. The generation of such lists has long been well-understood, routine, and conventional, as explained above. Nor do the claims recite any novel type of information or a new way of gathering, cataloguing, or transmitting that information." British Telecomm. , 381 F. Supp. 3d at 313 ("The apparatus and method contemplated by the patent could be replaced by a travel agent who receives a phone call from a traveler and then provides the traveler with a list of restaurants near the traveler's location.")
IV. CONCLUSION
The ’188 Patent claims the well-known process of performing a background check. While the patent inarguably "turns much of a common pre-employment background investigation electronic," such is not enough to make the abstract idea patent eligible. At the end of the day, it remains a "common pre-employment background investigation," which is not eligible for patent protection. Accordingly, the Motion is GRANTED and the above-captioned case is DISMISSED WITH PREJUDICE . All pending motions in the above-captioned case not explicitly granted herein are DENIED AS MOOT . Defendant shall further recover its costs as the prevailing party.