Weisner v. Google LLC

Case: 21-2228 Document: 62 Page: 1 Filed: 10/13/2022

United States Court of Appeals

for the Federal Circuit

______________________

SHOLEM WEISNER,

Plaintiff-Appellant

SHMUEL NEMANOV,

Plaintiff

v.

GOOGLE LLC,

Defendant-Appellee

______________________

2021-2228

______________________

Appeal from the United States District Court for the

Southern District of New York in No. 1:20-cv-02862-AKH,

Judge Alvin K. Hellerstein.

______________________

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 repre-

sented by DANIEL LEDESMA, KEVIN MCGANN, OLIVIA LYNN

WHEELING, New York, NY; ALLEN W. WANG, Mountain

View, CA.

Case: 21-2228 Document: 62 Page: 2 Filed: 10/13/2022

2 WEISNER v. GOOGLE LLC

______________________

Before REYNA, HUGHES, and STOLL, Circuit Judges.

Opinion for the court filed by Circuit Judge STOLL.

Opinion dissenting in part filed by Circuit Judge HUGHES.

STOLL, Circuit Judge.

Sholem Weisner appeals from the district court’s dis-

missal 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 af-

firm-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 com-

mon specification. 1 The shared specification generally de-

scribes 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 individ-

uals and businesses can sign up for a system so that they

can exchange information, for instance “a URL or an elec-

tronic business card.” Id. at col. 3 ll. 30–36. Then, as indi-

viduals 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

1 Because the specifications are identical, we refer

only to the ’202 patent specification unless otherwise spec-

ified.

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WEISNER v. GOOGLE LLC 3

l. 23; see also id. at Fig. 8. The specification describes a “leg

history” as “the accumulation of a digital record of a per-

son’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 en-

try (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):

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4 WEISNER v. GOOGLE LLC

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 prior-

ity to those search results that are found in the useful per-

son’s travel history (e.g., “www.vegassteakhouse.com” in

Figure 9):

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WEISNER v. GOOGLE LLC 5

Id. at Fig. 9.

Although the patents share a common specification,

the claims are meaningfully different in their focus. Inde-

pendent claim 1 of the ’202 patent recites recording “phys-

ical 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 en-

counter” entry is proposed by the stationary vendor “auto-

matic[ally]” and is recorded “upon acceptance by the

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6 WEISNER v. GOOGLE LLC

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 “telecom-

munications network,” “database,” “application,” “position-

ing 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 loca-

tion histories, comprising:

maintaining a processing system that is con-

nected to a telecommunications network and

configured to provide an account to an individ-

ual member and to a stationary vendor mem-

ber 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 be-

tween the individual member and the station-

ary 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 com-

munication with either the handheld mobile

communication device or a communication de-

vice of the stationary vendor member, and

upon acceptance by the handheld mobile com-

munication device of the individual member of

an automatic proposal from the stationary

vendor member, transmit a URL of the sta-

tionary vendor member and a URL of the in-

dividual member to the processing system

automatically, thereby generating a location

Case: 21-2228 Document: 62 Page: 7 Filed: 10/13/2022

WEISNER v. GOOGLE LLC 7

history entry, in at least the account of the in-

dividual member, that includes (i) the URL of,

and a location of, the stationary vendor mem-

ber, (ii) a time and date of the physical en-

counter, 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 physi-

cal 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 com-

munication device (i) by URL of the individual

member and of the stationary vendor mem-

ber, (ii) by geographic location, and (iii) by

time of the physical encounter,

maintaining, using the processing system, a da-

tabase of physical encounter histories of mem-

bers 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 en-

counter history to be accumulated through

transmission of location history entries from

multiple handheld mobile communication de-

vices of the individual member over time; and

wherein the physical encounter history of a par-

ticular individual member includes at least

one visual timeline of physical encounters of

the particular individual member.

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8 WEISNER v. GOOGLE LLC

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 de-

vice,” “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 initia-

tive of the individual choosing to record entries, rather

than in response to an individual “accept[ing]” an auto-

matic proposition by a vendor as in claim 1 of the ’202 pa-

tent. See id.

The representative claims of the remaining two pa-

tents have a different focus: using physical location histo-

ries to improve computerized search results. For instance,

the preamble of claim 1 of the ’911 patent recites “enhanc-

ing digital search results . . . using URLs of location histo-

ries.” ’911 patent col. 21 ll. 14–53 (claim 1). The preamble

to claim 1 of the ’905 patent likewise recites “combining en-

hanced 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 ac-

cumulating 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 histo-

ries, 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

Case: 21-2228 Document: 62 Page: 9 Filed: 10/13/2022

WEISNER v. GOOGLE LLC 9

network, the account associated with a URL,

the individual member’s account associated

with a mobile communication device or multi-

ple mobile communication devices,

maintaining a communication link between the

mobile communication device and the at least

one processing system or the positioning sys-

tem such that the mobile communication de-

vice is configured to accumulate a location

history on a database maintained by the at

least one processing system from physical en-

counters by the individual member at multi-

ple stationary vendor members upon the

mobile communication device being set to en-

ter instances of a physical encounter between

the individual member carrying the mobile

communication device and the stationary ven-

dor member at a physical premises of the sta-

tionary vendor member, the positioning

system determining a location of the individ-

ual 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 data-

base for URLs of stationary vendor members

in the location history, the location history

also identifying time and geographic place of

the physical encounters therein, and

(2) assigning a priority, by the at least one

processing system, in a search result ranking

based on an appearance of one of the station-

ary vendor member URLs in the location his-

tory of the individual member, wherein that

one of the URLs is of a particular stationary

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10 WEISNER v. GOOGLE LLC

vendor member located in the target geo-

graphic area.

’911 patent col. 21 ll. 14–53.

1. A method of combining enhanced computerized

searching for a target business with use of hu-

mans as physical encounter links, comprising:

maintaining a processing system connected to a

telecommunications network;

providing an application that allows a handheld

mobile communication device of each individ-

ual member of a member network, the device

in communication with a—positioning sys-

tem, upon a physical encounter between the

individual member and a stationary vendor

member of a plurality of stationary vendor

members of the member network at a physical

premises of the stationary vendor member, to

transmit key data of the stationary vendor

member and of the individual member to the

processing system automatically as a result of

the physical encounter, a location of each in-

dividual member’s device determined by the

positioning system, the key data being a URL

or an identifier associated with the URL;

maintaining, using the processing system, a da-

tabase of physical location histories of mem-

bers of the member network whose key data

was transmitted to the processing system dur-

ing the physical encounters,

determining, by the processing system, a physi-

cal location relationship recorded in the data-

base between a searching person who is a

member of the member network, a reference

individual member of the member network

and a first stationary vendor member of the

Case: 21-2228 Document: 62 Page: 11 Filed: 10/13/2022

WEISNER v. GOOGLE LLC 11

plurality of stationary vendor members, upon

the searching person making a search query

on a search engine having access to the pro-

cessing system; and

responding to the search query by generating a

computerized search result that increases a

ranking of the first stationary vendor member

based on the physical location relationship

wherein the relationship is as follows:

(a) the reference individual member’s physical

location history includes key data of the

first stationary vendor member; and

(b) the searching person’s physical location

history and the reference individual mem-

ber’s physical location history each include

key data of a second stationary vendor

member of the plurality of stationary ven-

dor members,

wherein the searching person’s physical location

relationship to the first stationary vendor

member is such that the searching person has

a physical location relationship with the sec-

ond stationary vendor member who has a

physical location relationship with the refer-

ence individual member who has a physical lo-

cation relationship with the first stationary

vendor member.

’905 patent col. 21 ll. 15–63.

II

Mr. Weisner filed suit on April 6, 2020, in the Southern

District of New York. At first, Mr. Weisner alleged in-

fringement of only the ’202 patent. J.A. 3023–31 (Com-

plaint). But he voluntarily amended his complaint on

June 16, 2020—before Google had responded to the initial

Case: 21-2228 Document: 62 Page: 12 Filed: 10/13/2022

12 WEISNER v. GOOGLE LLC

complaint—to add allegations of infringement of the other

three patents. J.A. 3032–61 (First Amended Complaint).

Google moved to dismiss Mr. Weisner’s First Amended

Complaint on two alternative bases. First, Google argued

that the asserted patent claims are ineligible under

35 U.S.C. § 101. Second, Google argued that Mr. Weisner

had failed to meet the minimum threshold for plausibly

pleading his claim of patent infringement under Bell Atlan-

tic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v.

Iqbal, 556 U.S. 662 (2009). The district court granted dis-

missal on the Twombly / Iqbal basis on January 4, 2021.

J.A. 12–14. It then held a hearing the next day to discuss

patent eligibility. J.A. 2001–25 (Hr’g Tr.). After the hear-

ing, the district court also granted dismissal based on inel-

igibility under § 101 in a short, one-paragraph order.

J.A. 15. In that same order, the district court provided

Mr. Weisner an opportunity to file an amended complaint.

Id.

Mr. Weisner filed a Second Amended Complaint (SAC),

adding allegations of infringement and allegations related

to patent eligibility. J.A. 2026–55. Relevant to this appeal,

Mr. Weisner added a section entitled “Invention Back-

ground and System Details Explained.” J.A. 2028–33 (SAC

¶¶ 11–30). Google again moved to dismiss the SAC based

on both § 101 and Twombly / Iqbal. The district court

granted dismissal based on § 101 without another hearing.

Weisner v. Google LLC, 551 F. Supp. 3d 334 (S.D.N.Y.

2021) (Weisner).

Mr. Weisner appeals. We have jurisdiction under

28 U.S.C. § 1295(a)(1).

DISCUSSION

We apply regional circuit law when reviewing motions

to dismiss for failure to state a claim under Rule 12(b)(6).

FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,

1092 (Fed. Cir. 2016). “In the Second Circuit, grant of a

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WEISNER v. GOOGLE LLC 13

motion to dismiss is reviewed de novo to determine

whether the claim is plausible on its face, accepting the ma-

terial factual allegations in the complaint and drawing all

reasonable inferences in favor of the plaintiff.” Ottah

v. Fiat Chrysler, 884 F.3d 1135, 1141 (Fed. Cir. 2018) (first

citing Iqbal, 556 U.S. at 678; and then citing Johnson

v. Priceline.com, Inc., 711 F.3d 271, 275 (2d Cir. 2013)).

Patent eligibility under § 101 is a question of law that

may involve underlying questions of fact. Interval Licens-

ing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018)

(citing Berkheimer v. HP Inc., 881 F.3d 1360, 1365

(Fed. Cir. 2018)). We review a district court’s ultimate con-

clusion on patent eligibility de novo. Id. We have held that

“[p]atent eligibility can be determined on the pleadings . . .

when there are no factual allegations that, when taken as

true, prevent resolving the eligibility question as a matter

of law.” Data Engine Techs. LLC v. Google LLC, 906

F.3d 999, 1007 (Fed. Cir. 2018).

Section 101 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 established

a two-step test for examining patent eligibility under § 101

in Alice Corp. v. CLS Bank International, 573 U.S. 208

(2014). Under step one, we “determine whether the claims

at issue are directed to . . . [a] patent-ineligible concept[,]”

such as an abstract idea. Id. at 217 (quoting Mayo Collab-

orative Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66, 77–

79 (2012)). Under step two, we “consider the elements of

each claim both individually and ‘as an ordered combina-

tion’ to determine whether the additional elements ‘trans-

form the nature of the claim’ into a patent-eligible

application.” Id. Step two is “a search for an ‘inventive

concept’—i.e., an element or combination of elements that

is ‘sufficient to ensure that the patent in practice amounts

to significantly more than a patent upon the [ineligible

Case: 21-2228 Document: 62 Page: 14 Filed: 10/13/2022

14 WEISNER v. GOOGLE LLC

concept] itself.’” Id. at 217–18 (alteration in original) (quot-

ing Mayo, 566 U.S. at 72).

I

We start with the ’202 and ’910 patents. We determine

the challenged claims of these patents are patent ineligible,

and thus we affirm the district court’s dismissal as to the

claims of these two patents.

A

At step one of Alice, we agree with the district court

that the representative claims2 of these patents are di-

rected to an abstract idea. The district court correctly de-

termined that the patent claims are directed to “collect[ing]

information on a user’s movements and location history

[and] electronically record[ing] that data.” Weisner, 551

F. Supp. 3d at 339. Put more simply, the claims are di-

rected to creating a digital travel log.

The claim language supports our conclusion that the

claims are directed to creating a digital travel log. For in-

stance, the preamble of claim 1 of the ’202 patent recites

“creating and/or using physical location histories.” ’202 pa-

tent col. 21 ll. 13–14. The steps in the body of the claim

describe a generic process for achieving the goal of creating

2 Although Mr. Weisner argues on appeal that a

number of claims are “exemplary,” Appellant’s Br. 20, 28,

32, 37, he only describes and analyzes claim 1 of each pa-

tent in any significant detail. Accordingly, we treat claim

1 of each patent as representative.

Mr. Weisner briefly mentions claim 3 of the ’202 patent

in two short paragraphs of his opening brief. Appellant’s

Br. 57, 59; see also Appellant’s Reply Br. 26. To the extent

that this was sufficient to preserve his argument, we also

determine that claim 3 is ineligible for the reasons de-

scribed below. See infra at 25 n.4.

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WEISNER v. GOOGLE LLC 15

a digital travel log, such as “maintaining a processing sys-

tem” and using an “application” to generate a user’s “loca-

tion history entry” on their “handheld mobile

communication device.” Id. at col. 23 ll. 15–67. The pre-

amble to claim 1 of the ’910 patent likewise recites a

“method for accumulation of physical location histories.”

’910 patent col. 21 ll. 16–19. And again, the body of the

claim recites generic features like a “processing system

that is connected to a telecommunications network,” a

“URL,” and a “handheld mobile communication device.” Id.

at col. 21 ll. 20–61.

Mr. Weisner does little to combat the district court’s ar-

ticulation of what the claims are directed to for these two

particular patents. Indeed, Mr. Weisner’s opening brief

states that “[t]he method of claim 1 of the ’202 patent is

directed to the creation and use of physical location histo-

ries.” Appellant’s Br. 37. Likewise, Mr. Weisner’s own al-

legations in the SAC of what the patents are “generally

directed to” also support our conclusion that the claims are

directed to creating a digital travel log. For instance,

Mr. Weisner states that “[t]he ’202 Patent is generally di-

rected to a method and system of creating and/or using

physical location histories.” J.A. 2035–36 (SAC ¶ 34). Sim-

ilarly, for the ’910 patent, Mr. Weisner alleges that patent

“is generally directed to a method, system and computer-

readable medium for accumulating physical location histo-

ries based on digital member entries using a URL or an

identifier associated with a URL.” J.A. 2044 (SAC ¶ 52).

Both the Supreme Court and this court’s precedent

suggest that claims purporting to improve “the functioning

of the computer itself” or “an existing technological pro-

cess” might not be directed to an abstract idea. Alice, 573

U.S. at 225; Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,

1335 (Fed. Cir. 2016). Based on this precedent, Mr. Weis-

ner asserts that claim 1 is not abstract, but rather “im-

proves the functionality of the underlying system” by

“[1] automatically recording physical interactions and

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16 WEISNER v. GOOGLE LLC

[2] limiting what is recorded to only specific types of inter-

actions that are pre-approved and agreed to by an individ-

ual member and a vendor member.” See, e.g., Appellant’s

Br. 57. As the district court correctly observed, however,

“[h]umans have consistently kept records of a person’s lo-

cation and travel in the form of travel logs, diaries, jour-

nals, and calendars, which compile information such as

time and location.” Weisner, 551 F. Supp. 3d at 339. Auto-

mation or digitization of a conventional method of organiz-

ing human activity like the creation of a travel log on a

computer does not bring the claims out of the realm of ab-

stractness. See Credit Acceptance Corp. v. Westlake Servs.,

859 F.3d 1044, 1055 (Fed. Cir. 2017) (“[M]ere automation

of manual processes using generic computers does not con-

stitute a patentable improvement in computer technol-

ogy.”); Content Extraction & Transmission LLC v. Wells

Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir.

2014) (“The concept of data collection, recognition, and

storage is undisputedly well-known.”).

Likewise, the fact that the claims recite a number of

generic elements—including a processing system, an appli-

cation, and a handheld mobile communication device—

does not shift their focus away from the core idea of creat-

ing a digital travel log. “[S]imply appending conventional

steps, specified at a high level of generality, to . . . abstract

ideas cannot make those . . . ideas patentable.” Mayo, 566

U.S. at 82; see also Affinity Labs of Tex., LLC v. Ama-

zon.com Inc., 838 F.3d 1266, 1272 (Fed. Cir. 2016) (“The

addition of basic user customization features to the inter-

face does not alter the abstract nature of the claims . . . .”).

Finally, Mr. Weisner’s last counterpoint—that the

claims are not abstract because they are directed to only

capturing the travel history of “members”—is not persua-

sive. Appellant’s Br. 56–58. According to Mr. Weisner, this

improves the “integrity” of the data and avoids an “inunda-

tion of information making it useless.” Id. at 56–58. But

these purported technological advantages are nothing

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WEISNER v. GOOGLE LLC 17

more than attorney argument, unlinked to the complaint

or the patent claims or specification. Indeed, neither the

specification nor the SAC addresses this purported techno-

logical improvement. Although the claims do recite a

“member of the member network” and other “member” lim-

itations, they do not limit the data collection to only mem-

bers. ’202 patent col. 21 ll. 13–67; ’910 patent col. 21

ll. 16–61. Thus, the purported benefit of limiting data ac-

cumulation to members is not captured in the claims and,

accordingly, does not shift the focus of the claims away

from the abstract idea of creating a digital travel log.

Accordingly, we agree with the district court’s analysis

at step one for these claims and reject Mr. Weisner’s argu-

ments to the contrary. Having concluded that the repre-

sentative claims for the ’202 and ’910 patents are directed

to an abstract idea, we proceed to step two.

B

Turning to step two, we consider the elements of each

claim both individually and “as an ordered combination” to

determine whether the claims recite “something more”

than the abstract idea to transform the nature of the claim

into a patent-eligible application. See Alice, 573 U.S. at 217

(quoting Mayo, 566 U.S. at 77–80). We conclude that the

district court appropriately relied on statements in the

specification and concessions by the patentee to conclude

that the claims “rely on the use of existing technology to

create a computerized version of [travel] logs and do not

‘focus on a specific means or method that improves the rel-

evant technology.’” Weisner, 551 F. Supp. 3d at 340 (quot-

ing Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241

(Fed. Cir. 2016)).

As the district court appropriately determined, the

specification describes the components and features listed

in the claims generically, supporting the conclusion that

these components and features are conventional, not in-

ventive concepts in the patents. See ’202 patent col. 8

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18 WEISNER v. GOOGLE LLC

ll. 32–42 (describing the “software 89” for implementing

the invention on a mobile device as being “content [that] is

known to those skilled in the art of computer science” and

which “can be readily developed or is already known to

those skilled in the art”), col. 8 ll. 38–40 (describing meth-

ods to “receive and transmit wirelessly” including “methods

such as Bluetooth®”), col. 8 ll. 43–60 (explaining that

“handheld electronic network device 22” includes “any

other handheld electronic device that is typically carried

around by people during their day including IPods, cellular

telephones, [etc.]”), col. 8 ll. 61–64 (generically describing

having a customer “sign up at a web site” to become “a

member of the network”), col. 11 ll. 44–46 (explaining that

the “telecommunications network” is typically “a global

network such as the world wide web”), col 15 ll. 44–50 (ref-

erencing a generic “GPS or other navigational system” to

create a “geographical place stamp”). We agree with the

district court that these claims do not recite significantly

more than the abstract idea of digitizing a travel log using

conventional components.

Mr. Weisner again argues that the claim limitations di-

rected to “members” provide the something more to trans-

form the claims into a patent-eligible invention.

Appellant’s Br. 54–55, 58–59; Appellant’s Reply Br. 22–24.

As explained above, however, this argument is not linked

to the claims.

For these reasons, we agree with the district court’s

conclusion that the asserted claims of the ’202 and ’910 pa-

tents are ineligible under § 101, and therefore affirm the

district court’s dismissal as to these claims.

II

We turn next to the ’905 and ’911 patents. We deter-

mine the challenged claims of these patents have not been

shown to be ineligible at the Rule 12(b)(6) stage, where the

court must accept all well-pleaded factual allegations as

true and must construe all reasonable inferences in favor

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WEISNER v. GOOGLE LLC 19

of Mr. Weisner. Thus, we reverse the district court’s dis-

missal as to the claims of these two patents.

A

At step one, the district court erred by failing to sepa-

rately analyze these patents. Although the specifications

in all four patents are the same, the claims of the ’905 and

’911 patents are not directed to the same subject matter as

the ’202 and ’910 patents. Rather, at step one, we conclude

that the representative claims of the ’905 and ’911 patents

are directed to creating and using travel histories to im-

prove computerized search results.

The claim language supports this focus. In contrast

with the preambles of claim 1 of both the ’202 and ’910 pa-

tents, which focus on creating the location histories, the

preamble to claim 1 of the ’911 patent recites a “method of

enhancing digital search results for a business in a target

geographic area using URLs of location histories.” ’911 pa-

tent col. 21 ll. 14–16. Similarly, the preamble to claim 1 of

the ’905 patent recites a “method of combining enhanced

computerized searching for a target business with use of

humans as physical encounter links.” ’905 patent col. 21

ll. 15–17. The bodies of the ’905 and ’911 patent claims also

support this emphasis. They first describe accumulation of

physical location histories in a highly generic fashion, and

then, in more detail, describe the use of the location histo-

ries in digital searches. ’905 patent col. 21 ll. 18–37 (first

half of claim 1 describing generating a database of physical

location histories), col. 21 ll. 38–63 (second half describing

using the physical location histories in response to a

“search query”); ’911 patent col. 21 ll. 17–37 (first half of

claim 1 describing “accumulat[ing] a location history on a

database”); col. 21 ll. 38–53 (second half describing using

that information in a “search query”).

The specification also supports this emphasis on using

location histories in computerized searching as a distinct

concept from mere accumulation of location histories. For

Case: 21-2228 Document: 62 Page: 20 Filed: 10/13/2022

20 WEISNER v. GOOGLE LLC

instance, the background of the invention lists certain as-

pects of searching on the world wide web as “[a]nother

problem” that the patent is directed to solving. ’905 patent

col. 2 ll. 47–62. Similarly, the “Summary of the Present In-

vention” emphasizes an “improved method of searching the

world wide web . . . that makes use of digital histories.” Id.

at col. 4 ll. 36–38. Finally, the detailed description of the

invention includes a section describing “Using Digital His-

tories to Improve Search Results.” Id. at col. 17 l. 8–col. 20

l. 67.

Our conclusion is again supported by allegations in

Mr. Weisner’s SAC regarding what the ’911 and ’905 pa-

tents are “generally directed to.” See J.A. 2041 (SAC ¶ 46)

(“The ’911 Patent is generally directed to a method and sys-

tem of enhancing digital search results for a business in a

target geographic area using URLs of location histo-

ries . . . .”); J.A. 2038–39 (SAC ¶ 40) (“The ’905 Patent is

generally directed to a method and system of combining en-

hanced computerized searching for a target business with

use of physical encounters between individuals having

communications devices and vendors . . . .”).

Whether these claims are directed to an abstract idea

presents a much closer question than the claims in the ’202

and ’910 patents. We ultimately conclude that the repre-

sentative claims of the ’905 and ’911 patents are directed

to an abstract idea, but that, on the pleadings, they satisfy

step two of the Alice test. Thus, we proceed to step two.

B

Turning to step two of Alice, we conclude that

Mr. Weisner has plausibly alleged that the ’905 and ’911

patent claims recite a specific implementation of the ab-

stract idea that purports to solve a problem unique to the

Internet and that, accordingly, these claims should not

have been held ineligible under step two at this stage.

Case: 21-2228 Document: 62 Page: 21 Filed: 10/13/2022

WEISNER v. GOOGLE LLC 21

The district court rejected the claims at step two be-

cause the “patents at issue . . . confirm that the patented

search and data collection uses conventional techniques

without an inventive concept.” Weisner, 551 F. Supp. 3d

at 340. In particular, the court relied on statements from

the SAC and specification that concede the patentee did not

invent a new search engine algorithm. J.A. 2030 (SAC

¶ 18) (conceding the patented system “uses the same or

similar algorithm used by existing search engines”); ’905

patent col. 17 ll. 13–15. Although this means the search

engine algorithm cannot be the inventive concept that

saves the claims at step two, this does not doom these

claims. As explained below, we conclude that the claims’

specificity as to the mechanism through which they achieve

improved search results (through a “location relationship”

with a “reference individual” for the ’905 patent or through

the “location history of the individual member” who is run-

ning the search in a targeted “geographic area” for the ’911

patent) is sufficient. Stated another way, disclosing a new

search engine algorithm is not necessary as these claims do

not per se concern searching for new information, but ra-

ther concern a new technique for prioritizing the results of

the conventional search. 3

Claim 1 of the ’905 patent plausibly captures an in-

ventive concept in the form of a specific technique for using

3 The dissent also echoes this same paragraph of the

SAC and lines from the specification regarding the search

algorithm. Dissent at 3. Like the district court’s opinion,

this misses the point. It is not the algorithm itself that is

alleged to be unconventional in the SAC. Rather, the SAC

and the patent specification allege that it is the specific im-

plementations for using the travel histories to prioritize the

order of the search results that operate differently than

conventional methods and solve an internet-centric prob-

lem, as further described below.

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22 WEISNER v. GOOGLE LLC

physical location history data to improve computerized

search results. In particular, claim 1 uses a “physical loca-

tion relationship” with a third-party “reference individual”

to increase the priority of search results. Claim 1 describes

how the physical relationship is established—the system

searches the physical location histories of both a reference

individual and the searching person to determine whether

they have visited a common location (“second stationary

vendor member”). ’905 patent col. 21 ll. 46–56. The system

then prioritizes search results that the reference individual

has visited. Id. at col. 21 ll. 46–48, 61–63 (stating “the ref-

erence individual . . . has a physical location relationship

with the first stationary vendor member” and “increas[ing]

a ranking of the first stationary vendor member”).

This is more than just the concept of improving a web

search using location history—it is a specific implementa-

tion of that concept. Even Google recognizes the specificity

in this process with the following diagram from its appeal

brief “illustrat[ing] the relationships”:

Appellee’s Br. 12.

This specific implementation is also alleged to solve a

problem particular to the Internet. The SAC emphasizes

this particular aspect as “something significantly more,”

explaining that “when a user will search for a physical lo-

cation to visit, the inventive system will search a list of the

physical location URLs and produce a result, based

Case: 21-2228 Document: 62 Page: 23 Filed: 10/13/2022

WEISNER v. GOOGLE LLC 23

on: past visit of such user, and past visits of location rela-

tives of such user.” J.A. 2031 (SAC ¶ 21). The SAC ex-

plains this feature provides “specifically tailored result[s]

to the searcher’s unique characteristics” and “eliminates

the inherent bias of pushing and referring places through

conventional web searches.” J.A. 2031–32 (SAC ¶¶ 22–23).

The SAC explains that this is different from the conven-

tional method, in which web searches merely defaulted to

the “highest-ranking Uniform Resource Locator (‘URL’)

link” by using purely “virtual encounters.” J.A. 2029 (SAC

¶¶ 15–16).

Looking to the intrinsic record, the specification also

emphasizes that conventional web searches have a problem

of returning voluminous, generic, non-personalized search

results. For example, the specification states that the cur-

rent “process of searching the world wide web does not ad-

equately take cognizance of the unique characteristics and

tastes of the searching person.” ’905 patent col. 2 ll. 57–60.

The solution, according to the specification, is an “improved

method of searching the world wide web . . . that makes use

of digital histories.” Id. at col. 4 ll. 36–38. That portion of

the specification specifically calls out the method of using

a “useful person” which operates the same as the “reference

individual” of the claims. Id. at col. 4 ll. 43–55. The speci-

fication describes this “useful person” mechanism in signif-

icant detail. Id. at col. 17 l. 53–col. 20 l. 67. Accepting

these factual allegations in the SAC and specification as

true, together with all reasonable inferences, as we must

at this stage, see Aatrix Software, Inc. v. Green Shades Soft-

ware, Inc., 882 F.3d 1121, 1127–30 (Fed. Cir. 2018); see also

Johnson, 711 F.3d at 275, we conclude that the claims of

the ’905 patent include an inventive concept that suffices

to defeat Google’s motion to dismiss.

Claim 1 of the ’911 patent is similar, although it pre-

sents a different solution to the problem of generic web

search results. Claim 1 of the ’911 patent is particular to

“search quer[ies] targeting a geographic area.” ’911 patent

Case: 21-2228 Document: 62 Page: 24 Filed: 10/13/2022

24 WEISNER v. GOOGLE LLC

col. 21 ll. 38–41. The claim recites searching the location

history database for entries “in the location history of the

individual member” conducting the geographically tar-

geted search that fall within “the target geographic area.”

Id. at col. 21 ll. 42–53. As described above, this implemen-

tation is alleged in the SAC to be an inventive concept that

improves computerized search results by taking into ac-

count the “past visit of such user” (i.e., the particular user

conducting the search) and “geographic location” of the

search. J.A. 2031 (SAC ¶ 21). This is contrasted against

the conventional method of prioritizing searches based ex-

clusively on “virtual encounters.” J.A. 2029 (SAC

¶¶ 15–16). And the claimed solution addresses the prob-

lem of non-personalized search results described in the

specification. ’911 patent col. 2 l. 64–col. 3 l. 2. Thus, we

conclude that the claims of the ’911 patent also include an

inventive concept that precludes an ineligibility determi-

nation at the pleadings stage.

We have previously held patent claims eligible at step

two when they provided a specific solution to an Internet-

centric problem. For example, the claims in DDR Hold-

ings, LLC v. Hotels.com, L.P., 773 F.3d 1245

(Fed. Cir. 2014), disclosed a system in which a visitor to a

webpage that clicked on an advertisement on that webpage

would not be transported to the third-party advertiser’s

page but instead would remain within the original host’s

webpage, allowing the host to retain web traffic. Id.

at 1257–58. We explained that this provided “an inventive

concept for resolving this particular Internet-centric prob-

lem, rendering the claims patent-eligible.” Id. at 1259.

And we noted that, unlike other patent claims that a pa-

tentee argued were eligible based on an “Internet-centric

challenge,” but that were held ineligible in Ultramercial,

Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), the

“claims at issue [in DDR] specify how interactions with the

Internet are manipulated to yield a desired result—a result

that overrides the routine and conventional sequence of

Case: 21-2228 Document: 62 Page: 25 Filed: 10/13/2022

WEISNER v. GOOGLE LLC 25

events ordinarily triggered by the click of a hyperlink.”

DDR, 773 F.3d at 1258.

The ’905 and ’911 patent claims are analogous to those

we held eligible in DDR. Here, the record supports that the

claims plausibly provide a solution to an Internet-centric

problem regarding web searches, allowing for more person-

alized search results than conventional methods. And like

the claims in DDR, the claims here avoid the Ultramercial

problem of “broadly and generically claim[ing] ‘use of the

Internet’ to perform an abstract business practice (with in-

significant added activity)” because they provide a “specific

way” to solve the problem—through the “reference individ-

ual.” Id. at 1258–59.

Thus, we conclude that claim 1 of the ’905 patent and

claim 1 of the ’911 patent plausibly recite inventive con-

cepts that add significantly more to the abstract idea of us-

ing travel histories to improve computerized search

results. These inventive concepts are supported by allega-

tions in the SAC as well as portions of the specification,

which we must accept as true at the pleadings stage. See

Aatrix, 882 F.3d at 1127–30; see also Johnson, 711 F.3d

at 275. 4

4 Like claim 1 of both the ’905 and ’911 patents,

claim 3 of the ’202 patent (mentioned only in passing in

Mr. Weisner’s brief) is directed to the idea of creating and

using travel histories to improve computerized search re-

sults. Unlike the ’905 and ’911 patent claims, however,

claim 3 of the ’202 patent fails to provide a “specific way”

to solve the internet-centric problem regarding computer-

ized search results. Instead, it recites the raw idea of using

travel histories in a search. Claim 3 broadly describes

“searching [] the physical encounter histories of the [loca-

tion history] database” and “using results of the searching

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26 WEISNER v. GOOGLE LLC

CONCLUSION

The district court correctly concluded that the claims

in the ’202 and ’910 patents are ineligible under 35 U.S.C.

§ 101. Accordingly, we affirm the district court’s dismissal

as to those patents.

The ’905 and ’911 patent claims, in contrast, plausibly

include more than merely the concept of improving com-

puterized search results using travel histories. Instead,

those claims add significantly more to that abstract idea by

implementing a specific solution to a problem rooted in

computer technology. Accordingly, we reverse the district

court’s dismissal as to the claims of the ’905 and ’911 pa-

tents.

AFFIRMED-IN-PART AND REVERSED-IN-PART

COSTS

No costs.

. . . to affect a ranking” in response to a search query. ’202

patent col. 22 ll. 4–7 (claim 3). It does not include any spec-

ificity as to whose histories are being used or how they are

being used to affect the search ranking, nor does it provide

any mechanisms for limiting the relevant histories. It thus

recites nothing more than the abstract idea. Accordingly,

we determine that claim 3 of the ’202 patent is ineligible.

Case: 21-2228 Document: 62 Page: 27 Filed: 10/13/2022

United States Court of Appeals

for the Federal Circuit

______________________

SHOLEM WEISNER,

Plaintiff-Appellant

SHMUEL NEMANOV,

Plaintiff

v.

GOOGLE LLC,

Defendant-Appellee

______________________

2021-2228

______________________

Appeal from the United States District Court for the

Southern District of New York in No. 1:20-cv-02862-AKH,

Judge Alvin K. Hellerstein.

______________________

HUGHES, Circuit Judge, dissenting-in-part.

I agree with the majority that the claims of the ’202 and

’910 patents are ineligible. I further agree that the claims

of the ’905 and ’911 patents are directed to the abstract idea

of “creating and using travel histories to improve comput-

erized search results.” I dissent-in-part because I disagree

with Part II.B of the majority’s analysis, determining that

the claims of the ’905 and ’911 patents recite inventive con-

cepts. Because the second amended complaint admits that

the algorithms used to incorporate location data are rou-

tine and conventional, and because the claims do not solve

Case: 21-2228 Document: 62 Page: 28 Filed: 10/13/2022

2 WEISNER v. GOOGLE LLC

a problem specific to the internet, I would affirm the dis-

trict court’s determination that the claims of these two pa-

tents are ineligible.

I

The second amended complaint and specifications re-

veal that the claimed methods of the ’905 and ’911 incorpo-

rate location history into a search engine algorithm in a

routine and conventional way: using well-understood

methods of incorporating browsing history. Thus, all the

claims add is the idea of using location history in a search

engine algorithm, which is the abstract idea itself.

At step two, we distinguish between “laws of nature,

natural phenomena, and abstract ideas”—which are not

themselves patentable subject matter—and inventive ap-

plications of the abstract idea—which might be eligible.

Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566

U.S. 66, 70–71 (“[A]n application of a law of nature or

mathematical formula to a known structure or process may

well be deserving of patent protection.” (quoting Diamond

v. Diehr, 450 U.S. 175, 187 (1981)). We make this distinc-

tion by examining “the elements of the claim to determine

whether it contains an ‘inventive concept’ sufficient to

‘transform’ the claimed abstract idea into a patent-eligible

application.” Aatrix Software, Inc. v. Green Shades Soft-

ware, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018) (quoting

Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 221

(2014)). “If the elements involve ‘well-understood, routine,

[and] conventional activity previously engaged in by re-

searchers in the field,’ they do not constitute an ‘inventive

concept.’” Id. at 1128 (alteration in original) (quoting Mayo,

566 U.S. at 73).

The question of inventiveness at step two can involve

underlying issues of fact, Berkheimer v. HP Inc., 881 F.3d

1360, 1365 (Fed. Cir. 2018), and we take the facts alleged

in the complaint as true when considering step two on a

motion to dismiss.

Case: 21-2228 Document: 62 Page: 29 Filed: 10/13/2022

WEISNER v. GOOGLE LLC 3

Mr. Weisner’s second amended compliant explains

that, “[p]rior to 2007, . . . [e]xisting search engine and

search algorithm technology used records of virtual en-

counters only.” Appx2029 at ¶ 15. Rather than “discern the

most relevant physical location,” these search engines re-

turned websites based on, among other things “the individ-

ual’s cyber activity [and] surf history.” Appx2029 at ¶ 16.

The claims of the ’905 and ’911 patents detail ways in

which a search engine can use a person’s history of physical

encounters to provide relevant search results. In the

’905 patent, the search engine uses location histories of

both the “searching” person and a second “reference” per-

son who has visited at least one of the same locations. ’905

patent at 21:50–63. The search engine prioritizes search

results appearing in the reference person’s location history.

Id. at 21:46–49. In the ’911 patent, the search engine pri-

oritizes results within the geographic area of the searching

person’s other physical encounters. ’911 patent at 21:39–

53.

The second amended complaint concedes, though, that

the claimed method “uses the same or similar algorithm

used by existing search engines, only with physical encoun-

ters that are now searchable online just as cyber encoun-

ters were until now.” Appx2030 at ¶ 18. In other words, the

claimed methods of using location history are conventional

methods, merely reused or adapted for use with a new type

of data—location history. This allegation accords with the

specification, which states that “[a]lgorithms can be easily

imagined by those skilled in the art of search engine algo-

rithms that would improve searching.” ’905 patent

at 17:13–15. Like search engines considered browsing his-

tory before 2007, the claimed “search engine algorithm

would consider the URLs in the [location] history of the

person doing the searching.” Id. at 17:18–19.

Taking the allegations in the complaint as true, the

claimed methods of incorporating location data are “well-

Case: 21-2228 Document: 62 Page: 30 Filed: 10/13/2022

4 WEISNER v. GOOGLE LLC

understood, routine, [and] conventional.” Mayo, 566 U.S. at

79 (alteration in original). The methods thus do not convert

the abstract idea—creating and using travel histories to

improve computerized search results—into an inventive

application.

Because the details of the methods are conventional,

the only purportedly unconventional aspect of the claims is

the use of location history in a search engine. See

Appx2029–31 at ¶¶ 17–21 (emphasizing “obstacles” related

to the collection of location history and the “benefits” of

having a location history and using it for search, rather

than any obstacles or benefits arising from the details of

the search algorithm implementation). But using location

history to improve search results is, as the majority con-

cludes, the abstract idea itself. Maj. Op. 20–22. “It has been

clear since Alice that a claimed invention’s use of the inel-

igible concept to which it is directed cannot supply the in-

ventive concept that renders the invention ‘significantly

more’ than that ineligible concept.” BSG Tech LLC v.

Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).

Thus, the ’905 and ’911 patents fail to claim an inventive

concept adequate to save them at step two.

II

DDR Holdings does not say otherwise. Although the

claims here are limited to internet search engines, they do

not solve an internet-specific problem.

In DDR Holdings, LLC v. Hotels.com, we upheld claims

covering an “e-commerce outsourcing system.” 773 F.3d

1245, 1249, 1255 (Fed. Cir. 2014). “On activation of a hy-

perlink on a host website—such as an advertisement for a

third-party merchant— . . . the system generates and di-

rects the visitor to a composite web page that displays prod-

uct information from the third-party merchant, but retains

the host website’s ‘look and feel.’” Id. at 1248–49. This sys-

tem solved the problem that “third-party merchants [could]

‘lure the [host website’s] visitor traffic away’ from the host

Case: 21-2228 Document: 62 Page: 31 Filed: 10/13/2022

WEISNER v. GOOGLE LLC 5

website because visitors would be taken to the third-party

merchant’s website when they clicked on the merchant’s

advertisement on the host site.” Id. at 1248 (quoting U.S.

Patent No. 6,629,135 at 2:26–30) (second alteration in orig-

inal).

We upheld these claims at step two, distinguishing Al-

ice and several other cases because the claims “do not

merely recite the performance of some business practice

known from the pre-Internet world along with the require-

ment to perform it on the Internet.” Id. at 1257. Instead,

“the claimed solution is necessarily rooted in computer

technology in order to overcome a problem specifically aris-

ing in the realm of computer networks.” Id.

The ’905 and ’911 patents purport to improve recom-

mendations provided on the internet. See ’905 patent at

2:47–62, 17:8; ’911 patent at 2:50–3:2. But the problem of

overly generic recommendations predates the internet, as

does the solution of using location information to improve

recommendations. To get more personalized recommenda-

tions from a travel agent, people could ask about specific

destinations and list locations they have visited before,

analogous to the method of the ’911 patent. To get more

personalized restaurant recommendations, people could

ask friends with similar tastes who have visited some of

the same restaurants, like the ’905 patent. Cf. In re Green-

stein, 778 F. App’x 935, 938–39 (Fed. Cir. 2019) (“[T]he

problem of trustworthy recommendations predates the In-

ternet” . . . “[and] is a business problem, not a technical

one.”); Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778

F. App’x 882, 884 (Fed. Cir. 2019) (“The concept of tailoring

advertisements based on user data . . . dates back at least

to local radio and television advertisements, which played

only for users located in specific cities and were published

in-between otherwise national programs. In the computer

context, prior art systems tracked users . . . . A user’s loca-

tion could be approximately determined by the IP address

of their device . . . .”). The sheer amount of non-local

Case: 21-2228 Document: 62 Page: 32 Filed: 10/13/2022

6 WEISNER v. GOOGLE LLC

information available on the internet perhaps exacerbates

the problem of overly generic recommendations, but this

does not make it an internet-centric problem.

By contrast, the claimed system in DDR “overc[a]me a

problem specifically arising in the realm of computer net-

works” that does not have the same close analogues in the

physical world—one cannot be inadvertently lured away

from a physical retail store with the press of a button. DDR,

773 F.3d at 1257. Rather than solving a problem specifi-

cally arising in the realm of computer networks, the

claimed methods of the ’911 and ’905 patents “merely recite

the performance of some business practice known from the

pre-Internet world along with the requirement to perform

it on the Internet.” Id.

I would find all challenged claims ineligible and re-

spectfully dissent-in-part.