Personalweb Technologies LLC v. Google LLC

Case: 20-1543 Document: 68 Page: 1 Filed: 08/12/2021

United States Court of Appeals

for the Federal Circuit

______________________

PERSONALWEB TECHNOLOGIES LLC,

Plaintiff-Appellant

v.

GOOGLE LLC, YOUTUBE, LLC,

Defendants-Appellees

______________________

2020-1543

______________________

Appeal from the United States District Court for the

Northern District of California in No. 5:13-cv-01317-EJD,

Judge Edward J. Davila.

-------------------------------------------------

PERSONALWEB TECHNOLOGIES LLC,

Plaintiff-Appellant

v.

FACEBOOK, INC.,

Defendant-Appellee

______________________

2020-1553

______________________

Case: 20-1543 Document: 68 Page: 2 Filed: 08/12/2021

2 PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC

Appeal from the United States District Court for the

Northern District of California in No. 5:13-cv-01356-EJD,

Judge Edward J. Davila.

-------------------------------------------------

PERSONALWEB TECHNOLOGIES LLC,

Plaintiff-Appellant

LEVEL 3 COMMUNICATIONS LLC,

Plaintiff

v.

EMC CORPORATION, VMWARE, INC.,

Defendants-Appellees

______________________

2020-1554

______________________

Appeal from the United States District Court for the

Northern District of California in No. 5:13-cv-01358-EJD,

Judge Edward J. Davila.

______________________

Decided: August 12, 2021

______________________

LAWRENCE MILTON HADLEY, Glaser Weil Fink Howard

Avchen & Shapiro LLP, Los Angeles, CA, argued for plain-

tiff-appellant. Also represented by JOEL LANCE

THOLLANDER, McKool Smith, PC, Austin, TX.

CYNTHIA D. VREELAND, Wilmer Cutler Pickering Hale

and Dorr LLP, Boston, MA, argued for all defendants-ap-

pellees. Defendants-appellees EMC Corporation, VMware,

Inc. also represented by JONATHAN COX, PETER M.

Case: 20-1543 Document: 68 Page: 3 Filed: 08/12/2021

PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC 3

DICHIARA, MARK CHRISTOPHER FLEMING; ELIZABETH

BEWLEY, Washington, DC.

MATTHIAS A. KAMBER, Keker, Van Nest & Peters LLP,

San Francisco, CA, for defendants-appellees Google LLC,

YouTube, LLC. Also represented by DAN L. BAGATELL, Per-

kins Coie LLP, Hanover, NH.

HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, for de-

fendant-appellee Facebook, Inc. Also represented by

REUBEN HO-YEN CHEN, LAM K. NGUYEN, MARK R.

WEINSTEIN.

______________________

Before LOURIE, PROST *, and REYNA, Circuit Judges.

PROST, Circuit Judge.

PersonalWeb Technologies appeals a decision by the

United States District Court for the Northern District of

California granting judgment on the pleadings for appel-

lees Google LLC, YouTube, LLC, Facebook Inc., EMC Cor-

poration, and VMware, Inc. That decision held various

claims of U.S. Patent Nos. 7,802,310 (“the ’310 patent”),

6,415,280 (“the ’280 patent”), and 7,949,662 (“the ’662 pa-

tent”) ineligible for patenting, and therefore invalid, under

35 U.S.C. § 101. 1 PersonalWeb Techs. LLC v. Google LLC,

No. 5:13-CV-01317, 2020 WL 520618, at *14 (N.D. Cal.

Jan. 31, 2020). We affirm.

* Circuit Judge Sharon Prost vacated the position of

Chief Judge on May 21, 2021.

1 The claims are: ’310 patent claims 24, 32, 81, 82,

and 86; ’280 patent claims 15, 16, 31, and 32; and ’662 pa-

tent claim 33.

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4 PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC

BACKGROUND

I

PersonalWeb’s asserted patents, which share a specifi-

cation and drawings, claim priority from an application

filed in 1995. We assume general familiarity with the pa-

tented subject matter, as we have discussed the ’310 patent

in prior opinions. 2 See Pers. Web Techs., LLC v. Apple, Inc.,

848 F.3d 987 (Fed. Cir. 2017); PersonalWeb Techs., LLC v.

Apple, Inc., 917 F.3d 1376 (Fed. Cir. 2019). In brief, the

patents relate to data-processing systems that assign each

data item a substantially unique name that depends on the

item’s content—a content-based identifier. ’310 patent

col. 1 l. 44–col. 2 l. 5, col. 3 ll. 50–58, col. 6 ll. 20–24. These

identifiers are generated by a mathematical algorithm,

such as a cryptographic hash or “message digest” function.

Id. at col. 12 l. 21–col. 13 l. 9. The identifier changes when

the data item’s content changes. Id. at col. 35 ll. 55–63.

The patents claim using such identifiers to perform various

data-management functions. Claim 24 of the ’310 patent,

for example, sets forth a method for using content-based

identifiers to control access to data. The method generally

proceeds in three steps: (1) receiving a request containing

a content-based identifier for a data item, (2) comparing

the content-based identifier to a plurality of values, and

(3) granting or disallowing access to the data item based on

the comparison:

24. A computer-implemented method implemented

at least in part by hardware comprising one or

more processors, the method comprising:

(a) using a processor, receiving at a first computer

from a second computer, a request regarding a par-

ticular data item, said request including at least a

2 For simplicity, all citations to the shared specifica-

tion are to the ’310 patent.

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PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC 5

content-dependent name for the particular data

item, the content-dependent name being based, at

least in part, on at least a function of the data in

the particular data item, wherein the data used by

the function to determine the content-dependent

name comprises at least some of the contents of the

particular data item, wherein the function that was

used comprises a message digest function or a hash

function, and wherein two identical data items will

have the same content-dependent name; and

(b) in response to said request:

(i) causing the content-dependent name of

the particular data item to be compared to

a plurality of values;

(ii) hardware in combination with software

determining whether or not access to the

particular data item is unauthorized based

on whether the content-dependent name of

the particular data item corresponds to at

least one of said plurality of values, and

(iii) based on said determining in step (ii),

not allowing the particular data item to be

provided to or accessed by the second com-

puter if it is determined that access to the

particular data item is not authorized.

’310 patent claim 24.

The relevant ’280 and ’662 patent claims reflect a sim-

ilar pattern but are geared toward different data-manage-

ment functions. Specifically, the ’280 patent claims use

content-based identifiers to retrieve data items, and the

’662 patent claims use content-based identifiers to mark

duplicate data items for deletion. E.g., ’280 patent

claim 31; ’662 patent claim 33. The disclosed systems are

“intended to work with an existing operating system.”

’310 patent col. 6 ll. 25–32.

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6 PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC

II

PersonalWeb sued the appellees for patent infringe-

ment in the Eastern District of Texas. After claim con-

struction, the cases were transferred to the Northern

District of California. That court stayed the cases pending

resolution of several inter partes reviews (“IPRs”) at the

Patent Trial and Appeal Board (“Board”), which challenged

various claims. In six IPRs filed by EMC and VMware, the

Board held all challenged claims unpatentable (including

’280 patent claims 26 and 38, as well as ’662 patent

claim 30). In doing so, the Board found that using hash-

based identifiers for data management was disclosed in the

prior art. J.A. 3426 (addressing ’280 patent); J.A. 3462–63

(addressing ’662 patent). We affirmed all six Board deci-

sions. Pers. Web Techs., LLC v. EMC Corp., 612 F. App’x

611 (Fed. Cir. 2015). The Board also held various ’310 pa-

tent claims unpatentable in a separate IPR filed by Apple

Inc. On appeal, we affirmed the Board’s claim construction

but remanded for it to reassess obviousness under proper

procedural constraints. PersonalWeb Techs., 848 F.3d

at 994. Along the way, we noted that a prior-art reference

“discloses a system for using content-based identifiers in

performing file-management functions, such as backing up

files.” Id. at 989. On review of the Board’s remand deci-

sion, we reversed the Board’s finding that a particular lim-

itation was inherently disclosed in the prior art, but we did

not disturb our earlier observation that content-based

identifiers were known. PersonalWeb, 917 F.3d at 1380–83

(reiterating that “none of the parties disagreed” that the

prior-art identifier “corresponded to the claimed content-

based identifier”).

After the stay was lifted, the appellees moved for judg-

ment on the pleadings that the remaining asserted claims

were ineligible under 35 U.S.C. § 101. The district court

granted the motion. PersonalWeb, 2020 WL 520618,

Case: 20-1543 Document: 68 Page: 7 Filed: 08/12/2021

PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC 7

at *14. 3 PersonalWeb appealed. We have jurisdiction un-

der 28 U.S.C. § 1295(a)(1).

DISCUSSION

The Patent Act defines patent-eligible subject matter

as “any new and useful process, machine, manufacture, or

composition of matter, or any new and useful improvement

thereof.” 35 U.S.C. § 101. The Supreme Court has held

that “this provision contains an important implicit excep-

tion: [l]aws of nature, natural phenomena, and abstract

ideas are not patentable.” Alice Corp. v. CLS Bank Int’l,

573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pa-

thology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).

This exception reflects the “‘concern that patent law not in-

hibit further discovery by improperly tying up the future

use of’ these building blocks of human ingenuity.” Id.

(quoting Mayo Collaborative Servs. v. Prometheus Labs.,

Inc., 566 U.S. 66, 85 (2012)). To assess patent eligibility,

we apply the two-step framework set forth in Mayo and fur-

ther detailed in Alice. At step one, we “determine whether

the claims at issue are directed to a patent-ineligible con-

cept” such as an abstract idea. Alice, 573 U.S. at 218. At

step two, “we consider the elements of each claim both in-

dividually and as an ordered combination to determine

whether the additional elements transform the nature of

the claim into a patent-eligible application.” Id. at 217

(cleaned up).

Patent eligibility is a question of law that may involve

underlying questions of fact. Simio, LLC v. FlexSim Soft-

ware Prods., Inc., 983 F.3d 1353, 1358–59 (Fed. Cir. 2020).

But “not every § 101 determination contains genuine

3 The district court also declined to convert the mo-

tion into one for summary judgment. PersonalWeb,

2020 WL 520618, at *7. PersonalWeb does not challenge

that aspect of the district court’s decision.

Case: 20-1543 Document: 68 Page: 8 Filed: 08/12/2021

8 PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC

disputes over the underlying facts material to the § 101 in-

quiry.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368

(Fed. Cir. 2018). Indeed, that inquiry “may be, and fre-

quently has been, resolved on a Rule 12(b)(6) or (c) motion

where the undisputed facts, considered under the stand-

ards required by that Rule, require a holding of ineligibility

under the substantive standards of law.” SAP Am., Inc. v.

InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018) (col-

lecting cases). We apply the procedural law of the regional

circuit, here the Ninth Circuit, which reviews Rule 12(c)

motions de novo. Allergan, Inc. v. Athena Cosms., Inc.,

640 F.3d 1377, 1380 (Fed. Cir. 2011) (citing Or. Nat. Desert

Ass’n v. U.S. Forest Serv., 550 F.3d 778, 782 (9th Cir.

2008)). The governing standard is “functionally identical”

to that for a motion to dismiss. Dworkin v. Hustler Mag.

Inc., 867 F.2d 1188, 1192 (9th Cir. 1989). The standard is

“whether the complaint at issue contains ‘sufficient factual

matter, accepted as true, to state a claim of relief that is

plausible on its face.’” Harris v. Cnty. of Orange, 682 F.3d

1126, 1131 (9th Cir. 2012) (quoting Ashcroft v. Iqbal,

556 U.S. 662, 678 (2009)). We review the district court’s

ultimate patent-eligibility conclusion de novo. Simio,

983 F.3d at 1359.

I

We start at step one. Because “all inventions embody,

use, reflect, rest upon, or apply laws of nature, natural phe-

nomena, or abstract ideas,” Alice, 573 U.S. at 217 (cleaned

up), we must decide “whether that patent-ineligible con-

cept is what the claim is ‘directed to,’” ChargePoint, Inc. v.

SemaConnect, Inc., 920 F.3d 759, 765 (Fed. Cir. 2019)

(quoting Thales Visionix Inc. v. United States, 850 F.3d

1343, 1349 (Fed. Cir. 2017)). To do so, we evaluate “the

‘focus of the claimed advance over the prior art’ to deter-

mine if the claim’s ‘character as a whole’ is directed to ex-

cluded subject matter.” Intell. Ventures I LLC v. Erie

Indem. Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017) (quoting

Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d

Case: 20-1543 Document: 68 Page: 9 Filed: 08/12/2021

PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC 9

1253, 1257 (Fed. Cir. 2016)). Here, the answer is yes. The

claims are directed to an abstract idea.

PersonalWeb contends that the claims are directed to

“a substantially unique, algorithm-derived, content-based

identifier for all data items in a networked computer,

which allows a computer within a network containing di-

verse computing and storage systems to locate and distrib-

ute data without knowing either the file system of any

device within the network or the conventional name of any

data item.” Appellant’s Br. 23. The district court, on the

other hand, concluded that the patents are directed to a

three-step process: “(1) using a content-based identifier

generated from a ‘hash or message digest function,’

(2) comparing that content-based identifier against some-

thing else, [that is,] another content-based identifier or a

request for data; and (3) providing access to, denying access

to, or deleting data.” PersonalWeb, 2020 WL 520618,

at *10. We adopt the district court’s view, which closely

tracks the claim language. See ChargePoint, 920 F.3d

at 769 (“[T]he § 101 inquiry must focus on the language of

the Asserted Claims themselves . . . .” (quoting Synopsys,

Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149

(Fed. Cir. 2016)); Alice, 573 U.S. at 219 (“On their face, the

claims before us are drawn to the concept of intermediated

settlement . . . .” (emphasis added)). The district court’s de-

scription, for example, mirrors the progression of ’310 pa-

tent claim 24 (reproduced above), on which PersonalWeb

relies, Appellant’s Br. 24.

Although PersonalWeb criticizes the district court’s

“summary of the asserted claims into a three-step process,”

Appellant’s Br. 31 (internal quotation marks omitted), this

formulation is not meaningfully distinguishable from what

PersonalWeb said in opposing the § 101 motion:

The asserted claims all recite (1) dividing the data

into sequences of bits, (2) calculating content-based

identifiers using the data in the data items, . . .

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10 PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC

(3) comparing the identifiers against a plurality of

other identifiers in the network, and (4) using the

results to identify, access, authorize access, or

manage the number of copies of data items within

the network.

...

Each asserted claim recites using content-based

values as a name or identifier for a data item: in

the ’310 patent, to control access to data items; in

the ’280 patent, to retrieve and deliver copies of

data items; and in the ’662 patent, to mark copies

of data items for deletion.

J.A. 6572, 6581. Because we must “focus here on whether

the claims of the asserted patents fall within the excluded

category of abstract ideas,” we agree with the district court.

Content Extraction & Transmission LLC v. Wells Fargo

Bank, Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. Cir. 2014) (em-

phasis added). We therefore conclude that the claims are

directed to the use of an algorithm-generated content-

based identifier to perform the claimed data-management

functions, which across the three patents include control-

ling access to data items (the ’310 patent), retrieving and

delivering copies of data items (the ’280 patent), and mark-

ing copies of data items for deletion (the ’662 patent).

These functions are mental processes that “can be per-

formed in the human mind” or “using a pencil and paper.”

CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,

1371–72 (Fed. Cir. 2011) (cleaned up) (quoting Parker v.

Flook, 437 U.S. 584, 586 (1978))—a telltale sign of abstrac-

tion. Appellees’ “library” example is instructive: “Librari-

ans often locate books based on a ‘call system’ where they

assign books unique identifiers based on call numbers,

which change dependent on a book’s volume, etc.” Person-

alWeb, 2020 WL 520618, at *12. Such content-based iden-

tifiers may be used to control access to books (e.g.,

authorize borrowing depending on book content), retrieve

Case: 20-1543 Document: 68 Page: 11 Filed: 08/12/2021

PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC 11

books (e.g., locate books on shelves based on their content),

or purge duplicate books (e.g., discard duplicates identified

by their content). The claims do this in a computer envi-

ronment, but that doesn’t transfigure an idea out of the

realm of abstraction. See BASCOM Glob. Internet Servs.,

Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir.

2016) (“An abstract idea on ‘an Internet computer network’

. . . is still an abstract idea.”). The claims’ focus, therefore,

is abstract. And our cases confirm this. As explained be-

low, each component of the claims’ three-step progression

reflects a concept we have already described as abstract.

First is the use of a content-based identifier. We said

that was abstract in Erie. There, we addressed claims to

“search [a] database using an index,” in which “every rec-

ord in the database is associated with one or more descrip-

tive terms” organized using “category tags” for “grouping of

similar terms” and “domain tags” for “grouping of similar

categories.” Erie, 850 F.3d at 1326. We noted the same

pen-and-paper analogue: “a hardcopy-based classification

system (such as library-indexing system)” in which “classi-

fiers organize and cross-reference information and re-

sources (such as books, magazines, or the like) by certain

identifiable tags, e.g., title, author, subject.” Id. at 1327.

We similarly described content-based identifiers as ab-

stract in Secured Mail Solutions LLC v. Universal Wilde,

Inc., 873 F.3d 905, 910–11 (Fed. Cir. 2017) (abstract idea

of using a “unique identifier . . . to communicate infor-

mation about the mail object, i.e., the sender, recipient, and

contents of the mail object”), and Intellectual Ventures I

LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir.

2016) (abstract idea of “receiving e-mail (and other data

file) identifiers, characterizing e-mail based on the identi-

fiers, and communicating the characterization”). The

claims’ use of content-based identifiers, therefore, is ab-

stract.

Generating such identifiers via a known algorithm is

no less abstract. “[W]e have treated analyzing information

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12 PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC

by steps people go through in their minds, or by mathemat-

ical algorithms, without more, as essentially mental pro-

cesses within the abstract-idea category.” Elec. Power

Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.

2016) (collecting cases)). For instance, the identifiers

claimed in Symantec were created “using a mathematical

algorithm.” 838 F.3d at 1313. And in RecogniCorp, LLC v.

Nintendo Co., we explained that “[a] process that started

with data, added an algorithm, and ended with a new form

of data was directed to an abstract idea.” 855 F.3d 1322,

1327 (Fed. Cir. 2017). That, too, holds true here.

Second is the step of comparing the content-based iden-

tifier against other values. That is also abstract. For ex-

ample, the Symantec claims required “determining . . .

whether each received content identifier matches a charac-

teristic of other identifiers.” 838 F.3d at 1313. There, as

here, this is the “abstract idea of 1) collecting data[] [and]

2) recognizing certain data within the collected data set.”

Id. at 1314–15 (quoting Content Extraction, 776 F.3d

at 1347). That’s a mental process.

Third is the data-management function, which varies

across the three patents. Each such function is abstract.

Controlling access to data items (the ’310 patent) is ab-

stract, as “[c]ontrolling access to resources is exactly the

sort of process that ‘can be performed in the human mind,

or by a human using a pen and paper,’ which we have re-

peatedly found unpatentable.” Ericsson Inc. v. TCL

Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1327

(Fed. Cir. 2020) (quoting CyberSource, 654 F.3d at 1372));

id. (noting that “[t]he idea . . . is pervasive in human activ-

ity,” for example, “in libraries (loaning materials only to

card-holding members)”). So is retrieving data items (the

’280 patent). E.g., Erie, 850 F.3d at 1327 (“abstract idea of

creating an index and using that index to search for and

retrieve data” (internal quotation marks omitted)); Content

Extraction, 776 F.3d at 1347 (“abstract idea of . . . collecting

data”). So too is marking data for deletion (the ’662

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PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC 13

patent), which is just another way to “classify[] data.” Erie,

850 F.3d at 1327; e.g., Symantec, 838 F.3d at 1314 (“[I]t was

[a] long-prevalent practice for people . . . to look at an en-

velope and discard certain letters . . . based on characteris-

tics of the mail.”). These are all mental processes and are

all abstract.

True, the step-one inquiry “looks to the claim[s’] ‘char-

acter as a whole’ rather than evaluating each claim limita-

tion in a vacuum.” Ericsson, 955 F.3d at 1326 (quoting

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335

(Fed. Cir. 2016)). But these claims “are clearly focused on

the combination of those abstract-idea processes.” Elec.

Power, 830 F.3d at 1354. Stringing together the claimed

steps by “[a]dding one abstract idea . . . to another,” Recog-

niCorp, 855 F.3d at 1327, amounts merely to the abstract

idea of using a content-based identifier to perform an ab-

stract data-management function—whether controlling ac-

cess to data, retrieving data, or marking data for deletion.

See, e.g., Secured Mail, 873 F.3d at 911 (“[E]ach step of the

process uses an identifier . . . to communicate information

about a mail object.”).

Some of our cases are particularly analogous and in-

structive. One of the Symantec claims included three steps

like the claims here (and in the same order): (1) “creating

file content IDs using a mathematical algorithm,” (2) “de-

termining . . . whether each received content identifier

matches a characteristic of other identifiers,” and (3) “out-

putting . . . an indication of the characteristic of the data

file based on said step of determining.” 838 F.3d at 1313.

Likewise, one of the Erie claims required (1) “identifying a

first XML tag that is associated with the first term,” fol-

lowed by (2) “determining whether a first metafile corre-

sponds to the first XML tag,” followed by (3) several data-

management functions, including “combining the first set

of XML tags into a key” used to “locate records” and “de-

liver[] the records.” 850 F.3d at 1327. There’s no relevant

difference in the claims here. The claims as a whole, then,

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14 PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC

are directed to a medley of mental processes that, taken

together, amount only to a multistep mental process.

PersonalWeb asserts that the claims are not abstract

because they offer a solution “necessarily rooted in com-

puter technology in order to overcome a problem specifi-

cally arising in the realm of computer networks.”

Appellant’s Br. 24 (quoting DDR Holdings, LLC v. Ho-

tels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Not

so. Both the solution (names based on content) and the

problems (access to, retrieval of, and redundancy control of

information) have long predated computers. PersonalWeb

contends that the claims are not abstract because they

claim “a new way of locating and distributing data in a

computer network” that promises efficiency benefits, Ap-

pellant’s Br. 24, but “[t]he fact that an identifier can be

used to make a process more efficient . . . does not neces-

sarily render an abstract idea less abstract,” Secured Mail,

873 F.3d at 910. Here, the asserted efficiency improve-

ments are not different in kind from those that would ac-

crue in the library analogue—for example, using content-

based identifiers to purge duplicate books.

Ultimately, “the focus of the claims is not on . . . an im-

provement in computers as tools, but on certain inde-

pendently abstract ideas that use computers as tools.”

Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,

1055 (Fed. Cir. 2017). In other words, the claims focus on

“mere automation of manual processes using generic com-

puters.” Id. That fails step one.

II

Onward to step two. Here we undertake “a search for

an inventive concept—i.e., an element or combination of el-

ements that is sufficient to ensure that the patent in prac-

tice amounts to significantly more than a patent upon the

ineligible concept itself.” Alice, 573 U.S. at 217–18 (cleaned

up). According to PersonalWeb, the claims contain an in-

ventive concept because they “recite an application that

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PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC 15

makes inventive use of cryptographic hashes—a use that

was neither conventional nor routine prior to the patents.”

Appellant’s Br. 12; see also id. at 38–39 (describing “using

content-dependent cryptographic hashes in place of con-

ventional names”). But that’s not something “more,” let

alone anything “significantly more,” than the abstract idea

itself. Alice, 573 U.S. at 218.

Indeed, the purported improvements that Personal-

Web sets forth just restate the abstract ideas discussed

above. See Appellant’s Br. 43 (“[T]he claims of the ’310 pa-

tent capture the improvement of using the content-based

identifier to ‘enforce[] use of valid licenses . . . by refusing

to provide access to a file without authorization.’” (third al-

teration in original) (quoting ’310 patent col. 31 ll. 9–12));

id. (“The claims of the ’280 patent capture the improve-

ments of ‘provid[ing] transparent access to any data item

by reference only to its identity’ and ‘verify[ing] that data

retrieved from another location is the desired or requested

data, using only the data identifier.’” (alterations in origi-

nal) (quoting ’280 patent col. 4 ll. 10–45)); id. (“The claims

of the ’662 patent capture the improvements of ‘stor[ing] at

most one copy of the data item’ and ‘maintain[ing] a desired

level of redundancy of data items.’” (alterations in original)

(quoting ’662 patent col. 4 ll. 4–21)). That is all abstract.

And even accepting PersonalWeb’s view that these partic-

ular uses are not well-known, routine, or conventional, “[a]

claim for a new abstract idea is still an abstract idea.” SAP,

898 F.3d at 1163 (quoting Synopsys, 839 F.3d at 1151).

So, “[w]hat else is there in the claims before us?” Mayo,

566 U.S. at 78. As to the subject-matter question, not

much. The district court had it right: there is “nothing ‘in-

ventive’ about any claim details, individually or in combi-

nation, that are not themselves abstract ideas.”

PersonalWeb, 2020 WL 520618, at *13. The district court

was also right that “[u]sing a generic hash function, a

server system, or a computer does not render these claims

non-abstract.” Id. “[O]ur precedent is clear that merely

Case: 20-1543 Document: 68 Page: 16 Filed: 08/12/2021

16 PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC

adding computer functionality to increase the speed or ef-

ficiency of the process does not confer patent eligibility on

an otherwise abstract idea.” Intell. Ventures I LLC v. Cap.

One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); e.g.,

OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363

(Fed. Cir. 2015) (“[R]elying on a computer to perform rou-

tine tasks more quickly or more accurately is insufficient

to render a claim patent eligible.”). PersonalWeb’s claims

merely “automate or otherwise make more efficient tradi-

tional . . . methods.” OIP, 788 F.3d at 1363. “[T]heir inno-

vation is an innovation in ineligible subject matter.” SAP,

898 F.3d at 1163. That fails step two.

Last, PersonalWeb argues also that “fact questions cre-

ated by the specification’s disclosure” made judgment on

the pleadings “improper.” Appellant’s Br. 51 (quoting

Berkheimer, 881 F.3d at 1370). While we agree that “the

most relevant and dispositive evidence before the district

court was the set of patents themselves,” Appellant’s

Br. 50, we disagree that this could have precluded judg-

ment on the pleadings here. “What is needed is an in-

ventive concept in the non-abstract application realm.”

SAP, 898 F.3d at 1168. None of PersonalWeb’s “improve-

ments in the specification” fit that bill. Appellant’s Br. 51.

Instead, they “lie[] entirely in the realm of abstract ideas,

with no plausibly alleged innovation in the non-abstract

application realm.” SAP, 898 F.3d at 1163. Judgment on

the pleadings, therefore, was appropriate.

CONCLUSION

We have considered PersonalWeb’s remaining argu-

ments and find them unpersuasive. The claims are ineligi-

ble for patenting. We therefore affirm the judgment of

invalidity.

AFFIRMED