Weisner v. Google LLC, 2021-2228

51 F.4th 1073

Sholem WEISNER, Plaintiff-Appellant

Shmuel Nemanov, Plaintiff

v.GOOGLE LLC, Defendant-Appellee

2021-2228

United States Court of Appeals, Federal Circuit.

Decided: October 13, 2022

Matthew De Preter, Aronberg Goldgehn, Chicago, IL, argued for plaintiff-appellant. Also represented by Jacob Ginsburg, Jacob Ginsburg, Esq. PLLC, Monsey, NY.

Todd Richard Gregorian, Fenwick & West LLP, San Francisco, CA, argued for defendant-appellee. Also represented by Daniel Ledesma, Kevin McGann, Olivia Lynn Wheeling, New York, NY; Allen W. Wang, Mountain View, CA.

Before Reyna, Hughes, and Stoll, Circuit Judges

Opinion dissenting in part filed by Circuit Judge Hughes.

Stoll, Circuit Judge.

Sholem Weisner appeals from the district court's dismissal of his patent infringement suit under Federal Rule of Civil Procedure 12(b)(6). The district court held all of the asserted claims ineligible under 35 U.S.C. § 101. We affirm-in-part and reverse-in-part.

BACKGROUND

I

Mr. Weisner—a named inventor of U.S. Patent Nos. 10,380,202, 10,642,910, 10,394,905 and 10,642,911 —sued Google LLC for patent infringement in the United States District Court for the Southern District of New York.

The four asserted patents are related and share a common specification.¹ The shared specification generally describes ways to "digitally record a person's physical activities" and ways to use this digital record. '202 patent, Abstract. Specifically, it describes a way in which individuals and businesses can sign up for a system so that they can exchange information, for instance "a URL or an electronic business card." Id. at col. 3 ll. 30–36. Then, as individuals go about their day, they may encounter people or businesses that they want recorded in their "leg history," which records the URLs or business cards along with the time and place of the encounters. Id. at col. 3 l. 48–col. 4 l. 23; see also id. at Fig. 8. The specification describes a "leg history" as "the accumulation of a digital record of a person's physical presence across time." Id. at col. 1 ll. 6–10.

Individuals record entries in their travel history either by accepting a proposal from another person/business (e.g., by "push[ing] a button"), or by unilaterally making an entry (e.g., by "tak[ing] a snapshot with a digital camera ... and upload[ing] it to [their] databank"). Id. at col. 3 l. 48–col. 4 l. 11. These methods are illustrated in Figure 3 (showing a user accepting a proposed entry by "Macy's") and Figure 4 (showing a user unilaterally making an entry at "Benson's" by taking a photograph):

Id. at Figs. 3–4; see also id. at col. 11 l. 20–col. 13 l. 18.

The specification also describes using this collected travel history data to "enhance web searching results." Id. at col. 17 ll. 9–13. For example, the specification describes a method for enhancing search results by using a "useful person"—someone that has visited a location in common with the searching person. Id. at col. 17 l. 53–col. 18 l. 35; see also id. at col. 19 l. 27–col. 20 l. 61. As illustrated in Figure 9, in response to a person's search, the system cross-references the digital histories of the searching person and the useful person to establish a common visit (e.g., "www.fourseasons.com" in Figure 9) and then gives priority to those search results that are found in the useful person's travel history (e.g., "www.vegassteakhouse.com" in Figure 9):

Id. at Fig. 9.

Although the patents share a common specification, the claims are meaningfully different in their focus. Independent claim 1 of the '202 patent recites recording "physical location histories" of "individual member[s]" that visit "stationary vendor member[s]" in a "member network." Id. at col. 21 ll. 13–67 (claim 1). In claim 1, the "physical encounter" entry is proposed by the stationary vendor "automatic[ally]" and is recorded "upon acceptance by the handheld mobile communication device of the individual member." Id. An example of such a system is shown in Figure 3, above.

Claim 1 also recites a variety of other generic hardware and software components and features, such as a "telecommunications network," "database," "application," "positioning system," "handheld mobile communication device," "URL," a "searchable" "physical encounter history," and a "visual timeline." Id. The full claim is lengthy:

1. A method of creating and/or using physical location histories, comprising:

maintaining a processing system that is connected to a telecommunications network and configured to provide an account to an individual member and to a stationary vendor member of a member network;

providing an application that configures a handheld mobile communication device of each individual member of a member network to, upon instances of a physical encounter between the individual member and the stationary vendor member of a plurality of stationary vendor members of the member network at a physical premises of the stationary vendor member, a location of the physical encounter determined by a positioning system in communication with either the handheld mobile communication device or a communication device of the stationary vendor member, and upon acceptance by the handheld mobile communication device of the individual member of an automatic proposal from the stationary vendor member, transmit a URL of the stationary vendor member and a URL of the individual member to the processing system automatically, thereby generating a location history entry, in at least the account of the individual member, that includes (i) the URL of, and a location of, the stationary vendor member, (ii) a time and date of the physical encounter, and (iii) an identity or the account of the individual member and of the stationary vendor member,

the URL of the individual member associated with the individual member before the physical encounter between the individual member and the stationary vendor member;

the application maintaining a viewable physical encounter history on the handheld mobile communication device that includes URLs from multiple stationary vendor members and is searchable from the handheld mobile communication device (i) by URL of the individual member and of the stationary vendor member, (ii) by geographic location, and (iii) by time of the physical encounter,

maintaining, using the processing system, a database of physical encounter histories of members of the member network whose accounts received the location history entry that was generated during the physical encounters, the individual member's account having data transfer privileges that allow the physical encounter history to be accumulated through transmission of location history entries from multiple handheld mobile communication devices of the individual member over time; and

wherein the physical encounter history of a particular individual member includes at least one visual timeline of physical encounters of the particular individual member.

Id. at col. 21 ll. 13–67.

Claim 1 of the '910 patent is similar. It, too, describes "accumulation of physical location histories." '910 patent col. 21 ll. 16–61. It likewise recites generic features such as an "application," "handheld mobile communication device," "database," etc. Id. The '910 patent's recited method, however, involves "capture by the particular individual member" that is processed "automatically." Id. In other words, the location history is recorded based on the initiative of the individual choosing to record entries, rather than in response to an individual "accept[ing]" an automatic proposition by a vendor as in claim 1 of the '202 patent. See id.

The representative claims of the remaining two patents have a different focus: using physical location histories to improve computerized search results. For instance, the preamble of claim 1 of the '911 patent recites "enhancing digital search results ... using URLs of location histories." '911 patent col. 21 ll. 14–53 (claim 1). The preamble to claim 1 of the '905 patent likewise recites "combining enhanced computerized searching ... with use of humans as physical encounter links." '905 patent col. 21 ll. 15–63 (claim 1). The claims then recite a number of steps for accumulating physical location histories (similar to the '202 and '911 patents ) but then also include steps related to computerized searches using these histories. Because we will discuss claim 1 of both the '911 and '905 patents in the analysis below, we repeat the claim language in full here:

1. A computer-implemented method of enhancing digital search results for a business in a target geographic area using URLs of location histories, comprising:

providing, by at least one processing system in communication with a positioning system, an account to (i) an individual member and (ii) a stationary vendor member, of a member network, the account associated with a URL, the individual member's account associated with a mobile communication device or multiple mobile communication devices,

maintaining a communication link between the mobile communication device and the at least one processing system or the positioning system such that the mobile communication device is configured to accumulate a location history on a database maintained by the at least one processing system from physical encounters by the individual member at multiple stationary vendor members upon the mobile communication device being set to enter instances of a physical encounter between the individual member carrying the mobile communication device and the stationary vendor member at a physical premises of the stationary vendor member, the positioning system determining a location of the individual member at the physical premises;

for each individual member having a location history who sends a search query to a search engine of the at least one processing system, the search query targeting a geographic area:

(1) searching, by the search engine, the database for URLs of stationary vendor members in the location history,

...