NetSoc Appeals to SCOTUS, Claiming Improper Analysis of Social Network Patent Nixed Under 101

By Matthew Schutte
April 14, 2021

“According to NetSoc, the CAFC failed to recognize that the network computer implementation of a social network with a rating system that is both novel and unconventional creates a better social network. This improved social network solves a technological problem linked to older social networks.”

Supreme CourtOn April 5, NetSoc LLC filed a petition for a Writ of Certiorari to the Supreme Court of the United States (SCOTUS) after losing its appeal in the U.S. Court of Appeals for the Federal Circuit (CAFC), which found NetSoc’s patent was directed to patent-ineligible subject matter.

NetSoc claims that U.S. Patent No. 9,978,107 (‘107 Patent), titled “Method and System for Establishing and Using a Social Network to Facilitate People in Life Issues,” was legally issued in 2003 contrary to the claim of respondents, Match Group LLC, Plenty of Fish Media and Humor Rainbow. NetSoc says that review is warranted to resolve four legal issues of importance, including:

  • Whether the CAFC’s analysis established a per se rule regarding the patentability of social networks;
  • whether, in 2003, a network computer implemented social network was an application of an abstract concept;
  • whether the creation of a network computer implemented social network transformed it into something concrete; and
  • whether solving a prior art technological problem allows for proper dismissal of a patent.

Establishment of a Per Se Rule

NetSoc claims that the CAFC’s December 31, 2020, analysis creates a per se rule that claims concentrating on a computer implemented social network are unpatentable. NetSoc believes that the CAFC failed to consider the underlying facts that the rating system was found to be unconventional by the patent examiner and ‘automation’ is never mentioned because the CAFC incorrectly assumed that the claims of the ‘107 patent were guided to “automating the conventional establishment of social networks to allow humans to exchange information and form relationships.” According to NetSoc, the CAFC failed to recognize that the network computer implementation of a social network with a rating system that is both novel and unconventional creates a better social network. This improved social network solves a technological problem linked to older social networks, mainly the process of matching users and participants based on a novel assessment making it patent eligible.

The CAFC failed to properly determine the emphasis of the claims resulting in a failure of the first step of Alice because of its search for a specific field or particular component failed in finding that the ‘107 patent’s claims are not directed to the formation of something concrete. NetSoc argues that because the patent was granted in 2003 that “a computer implemented social network with a novel rating system was not conventional and thus not an abstract unpatentable idea pertaining to organizing human activity.”

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New Age Social Networks

NetSoc’s second argument claims that the CAFC’s conclusion that social networks are an established practice is not the appropriate inquiry. The CAFC’s two-step test for determining the patent eligibility of alleged “abstract ideas” was never envisioned as a per se rule making unpatentable all ideas or concepts related to the application of a social network. This is because all inventions, at some level, “embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” When a 2003 computer implemented social network with a rating system are put “to a new and useful end … [they] remain eligible for patent protection” making it patentable subject matter. NetSoc highlights the specifications of the ‘107 patent saying the specifications discuss “how the claimed social network facilitates people with life issues like employee relocation” which makes the claims new and useful.

NetSoc claims:

The Federal Circuit however erred by finding the claims of the ‘107 patent conventional based on the incorrect assertion that ‘the ‘107 patent specification acknowledges that social networks are a longstanding practice.’ Rather, the specification provides the claimed social networks ‘facilitate individuals to resolve various life issues…’

These claims “focus on a specific means or method that improves” a network computer implemented social network which makes it patent eligible.

Citing CardioNet, LLC v. InfoBionic Inc., NetSoc argues that the claims of the ‘107 patent are not unlike the claims in CardioNet, where the CAFC found the claims directed on a specific means or method of improvement of cardiac monitoring technology and not focused on a result or effect that is itself the abstract idea or simply invokes a generic process and machinery. To confirm its conclusion, the CAFC used the written description. NetSoc believes that there are similarities to the specifications of the ‘107 patent which are more akin to a technological improvement because of making relocation a success.

Savior from Rule 12

NetSoc’s final reason for granting the petition is their argument that dismissal under Federal Rules of Civil Procedure, Rule 12 is inappropriate when the specification claims solutions to prior art issues. A 2003 network implemented social network can’t be considered conventional when the factual record is examined as a whole. The CAFC’s incorrect step one analysis is the wrong assumption that the claims are focused on automating techniques that are known. NetSoc claims it’s difficult to believe how anyone could mentally produce a social network with the novel and unconventional rating system that is claimed in the ‘107 patent. A person can match arrangements, for a conventional social network, it’s the rating based in part on tracked answer time that is unconventional about the claims and not fathomably performed by a person. The CAFC didn’t recognize any social network where a person performed the rating as claimed. If discovery had been more fully developed, then the facts would have shown that the claimed rating system was discovered to cause the asserted social network to work in an unconventional way. This means the claims were found to be unconventional which was “not properly addressed at the 12(b)(6) stage when all reasonable inferences should be taken or the non-movant.”

NetSoc concluded this argument by highlighting an advantage of the claims of the ‘107 patent, which is described as making employee relocation a success, in the specification. This genuine determination is important in the eligibility analysis because early dismissal on eligibility grounds should be rare when the record isn’t well-developed. If the record were fully developed, it would show that in 2003, a computer implemented social network was not conventional. In 2003, no person could mentally perform as the novel and unconventional rating system that is claimed in the ‘107 patent.

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The Author

Matthew Schutte

Matthew Schutte is a 1L at the University of New Hampshire Franklin Pierce School of Law. Before attending law school, Matthew attended Purdue University where he earned a Bachelor of Science in Mechanical Engineering. Upon graduation from Purdue, Matthew worked at Cummins Inc. as a Test Engineer for two years. Matthew looks forward to applying his technical experience to the field of intellectual property law.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 11 Comments comments.

  1. Anon April 14, 2021 1:18 pm

    Chance of cert?

    Zero.

    Join the massive stack.

  2. Pro Say April 14, 2021 3:33 pm

    An improper 101 / eligibility analysis by the CAFC?

    Now there’s a surprise, right?

    But whew! Thank goodness SCOTUS will quickly step right in and do the good, right, and constitutional thing by correcting it . . .

    Or Congress will step up and finally pass a bill to render the decision moot by restoring patent protection to all areas of innovation . . .

    Sure they will.

    Sure. They. Will.

    (And that noise you could swear you’ve heard before? China squealing in delight — yet again.)

  3. George April 14, 2021 5:16 pm

    Not the end of the world, folks! Just keep more things ‘trade secret’ (especially software) and only available on the cloud (which hopefully will be ‘super-secure’).

  4. concerned April 14, 2021 7:26 pm

    George:

    The lack of Rule of Law will not protect anything or anybody.

    Agree with Anon: Zero chance SCOTUS cleans up their own mess.

  5. Emily White April 14, 2021 10:00 pm

    Well – your comments were certainly uplifting :). Nevertheless – I do appreciate this analysis But what do I know? ( the Inventor)

  6. Joachim Martillo April 15, 2021 5:32 am

    This assertion from the inventors is probably untrue.

    NetSoc concluded this argument by highlighting an advantage of the claims of the ‘107 patent, which is described as making employee relocation a success, in the specification. This genuine determination is important in the eligibility analysis because early dismissal on eligibility grounds should be rare when the record isn’t well-developed. If the record were fully developed, it would show that in 2003, a computer implemented social network was not conventional. In 2003, no person could mentally perform as the novel and unconventional rating system that is claimed in the ‘107 patent.

    During the 80s various organizations within the US military implemented a distributed logistics system that worked in the same way.

    The relocation problem is logically equivalent to a deployment problem.

    Of course, the existence of the military prior art would mean a claim is not patentable under § 103 even if it is eligible.

  7. Anon April 15, 2021 7:42 am

    Joachim, I think that you are mistaking “network” for the actual particularity of the claimed advance.

    Quite in fact, a military network would NOT want to operate as a social network, and it should be readily apparent (at least to a Person Having Ordinary Skill In The Art) why not.

    That being said, different legal arguments under 103 may be available (as you indicate), and the point of distinction that 101 is NOT 103 should be emphasized.

  8. Paul Cole April 15, 2021 9:11 am

    I think it became obvious from the Mayo case that in order to confer eligibility, the allegedly novel features of a claim must in themselves have eligible character. Claim 1 of the patent in issue reads:

    A method for establishing a social network, the method being implemented on a network computer system and comprising:
    — maintaining a list comprising a plurality of participants, wherein each participant in the plurality of participants corresponds to one or more individuals, wherein the list also includes information associated with at least one of each participant or the one or more individuals that correspond to each participant;
    — presenting a user with an interface from which the user makes a selection of a category from a plurality of categories;
    — in response to receiving the selection of the category by the user,
    — displaying, for the user, some of the information associated with each of multiple participants from the plurality of participants which match the selection of the category by the user, while shielding contact information associated with each of the multiple participants;
    — wherein displaying some of the information associated with each of the multiple participants is based at least in part on a rating of individual participants in the plurality of participants;
    — enabling the user to send an inquiry message to one or more of the multiple participants, while shielding the contact information from the user, the contact information including any messaging identifier that is associated with each of the one or more participants;
    — tracking a response time of each of the one or more participants who received the message from the user; and
    — updating the rating associated with each of the one or more participants based at least in part on the tracked response time.

    As a user of personal computers and the internet since 1982 when I acquired an Epson HX20 which I believe was the first laptop personal computer, I can discern nothing in this collection of features which is in any way unusual or surprising, or which goes beyond what would have been expected of computer system functionality for decades. The existence of any surprising new function or effect associated with these features considered in combination seems to me implausible, and the questions raised in the petition seem to me of an entirely humdrum character. Paraphrasing Groucho Marx: “I’ve found a really wonderful invention. But this wasn’t it.”

    Those who follow my postings will be well aware of my comments on apparently meritorious inventions held ineligible by CAFC gold-plating of Supreme Court eligibility jurisprudence. In this instance I support Anon: chance of certiorari – zero and deservedly so.

  9. Anon April 15, 2021 2:52 pm

    MR. Cole,

    In the Sovereign of the US, even though you are not a practitioner, and seeing as you cannot help but be an advocate, I would hope that you would understand that, “the allegedly novel features of a claim must in themselves have eligible character.” is a bastardization of our written law (by Congress).

    IF you want to help – start with identifying the start of the problem.

  10. Model 101 April 15, 2021 8:02 pm

    More nonsense!

  11. Night Writer April 16, 2021 6:39 am

    The key science that the Scotus is getting wrong is that information processing is a physical process. It takes time, energy, and money to process information. And the conservation of information is one of the most important laws of physics.