British Telecommunications Plc v. Iac/interactivecorp, Match Group, Inc., Match Group, LLC

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

BRITISH TELECOMMUNICATIONS PLC,
Plaintiff-Appellant

v.

IAC/INTERACTIVECORP, MATCH GROUP, INC.,
MATCH GROUP, LLC,
Defendants-Appellees

TINDER, INC., VIMEO, INC.,
Defendants
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2019-1917
______________________

Appeal from the United States District Court for the
District of Delaware in No. 1:18-cv-00366-WCB, Circuit
Judge William C. Bryson.
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Decided: June 3, 2020
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D
ANIEL A. BOEHNEN, McDonnell, Boehnen, Hulbert &
Berghoff, LLP, Chicago, IL, for plaintiff-appellant. Also
represented by JEFFREY PALMER ARMSTRONG, GRANTLAND
GILBERT DRUTCHAS, GEORGE THOMAS LYONS, III.

ROBERT LOUIS HAILS, JR., Baker & Hostetler LLP,
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BRITISH TELECOMMUNICATIONS v. IAC/INTERACTIVECORP
2
Washington, DC, for defendants-appellees. Also repre-
sented by T. CY WALKER.
______________________

Before DYK, TARANTO, and HUGHES, Circuit Judges.
TARANTO, Circuit Judge.
British Telecommunications PLC owns U.S. Patent
No. 6,397,040, which describes and claims methods, sys-
tems, and apparatuses for selecting information sources to
provide to a user via a telecommunication system. British
Telecom sued IAC/InterActiveCorp and several of its sub-
sidiaries (collectively, IAC) in the United States District
Court for the District of Delaware, alleging that IAC in-
fringed six British Telecom patents, including the ’040 pa-
tent. The district court held that all claims of the ’040
patent are invalid under 35 U.S.C. § 101. British Telecom-
munications PLC v. IAC/InterActiveCorp, 381 F. Supp. 3d
293 (D. Del. 2019) (Merits Opinion). British Telecom ap-
peals. We affirm.
I
A
The ’040 patent, titled “Telecommunications Appa-
ratus and Method,” claims priority to a Patent Cooperation
Treaty application filed in 1998, which itself claims the
benefit of a United Kingdom patent application filed in
1997. The ’040 patent states, as background facts, that in
the late 1990s people increasingly wanted information
communicated to their mobile devices, ’040 patent, col. 1,
lines 12–29, that the volume of information transmitted
over communication systems was increasing, id., col. 1,
lines 25–29, and yet the radio frequency channels used for
mobile communication were ill suited for transmitting
large amounts of information, id., col. 1, lines 36–41. As a
solution, the ’040 patent describes a method of transmit-
ting information to terminals that involves tracking a
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user’s location, generating a “shortlist” of information
sources relevant to the user’s location, and transmitting
that shortlist to the user’s terminal. Id., col. 2, line 53,
through col. 3, line 2.
All 44 claims of the ’040 patent are at issue in this ap-
peal. Claim 1 is illustrative for purposes of deciding the
issues on appeal:
1. A method of selecting information sources from
which information is provided to users via a tel-
ecommunications system, said method com-
prising:
tracking the location of a user in the system by re-
ceipt of tracking information for said user;
accessing location data indicating localities in
which information from the respective sources
is deemed to be relevant;
generating a shortlist of information sources for
said user on the basis of said tracking infor-
mation and said location data; and
transmitting said shortlist to a terminal associated
with said user so as to allow said user to select
an information source of interest and thereby
to access information from said source.
Id., col. 12, lines 35–50.
B
In March 2018, British Telecom filed a complaint in the
District of Delaware, alleging that IAC infringed six Brit-
ish Telecom patents, including the ’040 patent. IAC moved
to dismiss the complaint under Federal Rule of Civil Pro-
cedure 12(b)(6), arguing that British Telecom had failed to
plead facts that made infringement plausible for two of the
patents and that the other four patents, including the ’040
patent, claim subject matter not eligible for patenting
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under 35 U.S.C. § 101. The district court denied dismissal
as to the two patents for which IAC challenged the infringe-
ment allegations, Merits Opinion, 381 F. Supp. 3d at 300–
03, but granted dismissal as to the remaining four patents
for which IAC argued lack of eligibility under § 101, id. at
308–22. Subsequently, acting under Federal Rule of Civil
Procedure 21, the district court severed the count of the
complaint concerning the ’040 patent and entered a final
judgment. British Telecommunications PLC v.
IAC/InterActiveCorp, No. 1:18-cv-00366-WCB, 2019 WL
1765225, at *5–6 (D. Del. Apr. 22, 2019).
British Telecom timely appealed. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1).
II
On appeal, British Telecom argues that the claims of
the ’040 patent are not directed to an abstract idea and, in
any event, include inventive concepts. British Telecom fur-
ther contends that the district court erred in holding all the
’040 patent claims ineligible when the court and IAC sub-
stantively addressed only claim 1.
We review Rule 12(b)(6) dismissals under the law of the
appropriate regional circuit, Aatrix Software, Inc. v. Green
Shades Software, Inc., 882 F.3d 1121, 1124 (Fed. Cir.
2018), here the Third Circuit, which reviews such dismis-
sals de novo, Newark Cab Association v. City of Newark,
901 F.3d 146, 151 (3d Cir. 2018). Like the district court,
we must “accept all factual allegations in the complaint as
true and construe those facts in the light most favorable to
the plaintiffs.” Newark Cab, 901 F.3d at 151.
Section 101 provides that “[w]hoever invents or discov-
ers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor.” 35 U.S.C. § 101.
But the provision “contains an important implicit excep-
tion: Laws of nature, natural phenomena, and abstract
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ideas are not patentable.” Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (internal quotation marks omit-
ted). A claim is invalid under section 101 where (1) it is
“directed to” a patent-ineligible concept, such as an ab-
stract idea, and (2) the particular elements of the claim,
considered “both individually and as an ordered combina-
tion,” do not add enough to “transform the nature of the
claim into a patent-eligible application,” i.e., do not set
forth an “inventive concept.” Alice, 573 U.S. at 217 (inter-
nal quotation marks omitted); SAP America, Inc. v. In-
vestPic, LLC, 898 F.3d 1161, 1166–67 (Fed. Cir. 2018).
A
The claims of the ’040 patent are directed to an abstract
idea: “providing lists of location-specific information
sources to users based on their location.” Merits Opinion,
381 F. Supp. 3d at 311 (internal quotation marks omitted).
We have previously held that tailoring the provision of in-
formation to a user’s characteristics, such as location, is an
abstract idea. Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015); see Af-
finity Labs of Texas, LCC v. Amazon.com Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016). Despite British Telecom’s con-
tentions, the ’040 patent claims are not directed to any im-
provement in how a computer or communication network
functions but merely use computers as tools to implement
an independently abstract idea. See Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
The claims here do not differ materially from those we have
held directed to abstract ideas.
B
The claims do not pass muster under the second step of
the Alice inquiry because they do not set forth an inventive
concept that would transform their subject matter into
something more than the abstract idea. Claim 1 recites
only generic computer hardware—a “telecommunications
system” and “terminal,” ’040 patent, col. 12, lines 35–50—
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as performing functions that the ’040 patent’s specification
admits were conventional, id., col. 1, line 12, through col.
2, line 32. “Nothing in the claims, understood in light of
the specification, requires anything other than off-the-
shelf, conventional computer, network, and display tech-
nology for gathering, sending, and presenting the desired
information.” Electric Power, 830 F.3d at 1355. Such
claims fail under Alice.
C
The district court did not err in holding all the claims
of the ’040 patent invalid. The court correctly determined
that IAC substantively challenged all the ’040 patent
claims. Merits Opinion, 381 F. Supp. 3d at 322; see J.A. 590
(“The ’040 Patent contains 44 claims, of which five are in-
dependent claims. Because [British Telecom] asserts only
claim 1 in its [first amended complaint], [IAC’s] analysis
addresses that claim. The analysis presented herein, how-
ever, applies equally to all claims of the ’040 Patent.”). Alt-
hough British Telecom disputed that claim 1 was
representative, J.A. 760 n.5, it presented no separate argu-
ment for the eligibility of any claim aside from claim 1, see
J.A. 760–66. Because British Telecom did not present any
“meaningful argument for the distinctive significance of
any claim limitation” not found in claim 1, the district court
did not err in finding that British Telecom had forfeited its
ability to argue that other claims are separately patent el-
igible. Berkheimer v. HP Inc., 881 F.3d 1360, 1365
(Fed. Cir. 2018).
III
For the foregoing reasons, we affirm the district court’s
judgment.
AFFIRMED
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