- within Criminal Law topic(s)
In an opinion synthesizing and applying the current state of Section 101 law, Judge William Bryson of the U.S. Court of Appeals for the Federal Circuit, sitting by designation in a district court, held on summary judgment that a patent claim directed to improving users' profiles for online dating by analyzing their responses to proposed matches was invalid as directed to ineligible subject matter. British Telecommunications PLC v. IAC/Interactive Corp., 2025 WL 2240699 (D. Del. 2025).
The Patent at Issue
After several years of litigation, the only remaining claim was claim 10 of U.S. Patent No. 7,243,105 (the 105 patent), which recited:
A method of updating a user profile, the user profile being suitable for use in providing customized services to a respective user, the method comprising:
(i) storing a first set of
rules;
(ii) generating a set of personalized rule weightings according to
a second set of rules and with reference to a set of user
preference data;
(iii) receiving event statistics relating to a user's activity;
and
(iv) applying an inference engine to infer and output at least one
update to a profile for the user according to said first set of
rules weighted according to said generated set of personalized rule
weightings, using said received event statistics.
Describing the claim as "not easy to parse," the court offered what it called a "fair (if simpler) description" of the claim as follows:
A method of updating a user profile, comprising (1) using data, such as a user's stated preferences, to create a profile for the user according to a stored first set of rules; (2) using a second set of rules (the "meta-rules") to generate a set of weightings for the application of the first set of rules by discerning the user's preferences in practice based on statistics relating to the user's activity; and (3) drawing inferences about the user's preferences based on the weighted first set of rules.
The Practical Application: Online Dating Example
To illustrate the claimed method, the court provided a real-world example in the online dating context:
An online dating service might ask a user to state preferences for educational level, age, and height. If the user indicated preferences for men between 25-35 years old, over six feet tall, with a college degree, the service would initially show matches meeting those criteria.
If the service then presented various potential matches – some meeting all criteria, others only some – the court explained how the user's actual selection behavior would constitute "event statistics." For example, if the user consistently selected candidates with college degrees regardless of height, the service would apply a second set of rules to update the profile, giving higher weight to education and lower weight to height.
The Court's Section 101 Analysis Framework
Before engaging in the analysis under Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014), Judge Bryson synthesized six principles from Section 101 jurisprudence:
- Methods of Organizing Human Activity. Economic and business practices are often abstract ideas.
- "Do It on a Computer" Claims. Simply performing human mental activities on a computer doesn't create patentability.
- Improvements to Computer Technology. Actual technological improvements can be patent-eligible.
- Collecting and Analyzing Information. Collection, analysis and display of information using generic computers is typically abstract.
- Functional Claims. Claims focused on results without specifying how those results are achieved may be abstract.
- Preemption Concerns. Claims with broad preemptive effects on future innovation are more likely abstract.
Alice Step One Analysis
At step one of the Alice test, the court found claim 10 directed to an abstract idea for multiple reasons:
- Mental Processes. The claimed process could be performed in the human mind, as exemplified by the car salesman who observes a customer expressing interest in an economical sedan but then showing more enthusiasm for sports cars. The salesman mentally "reweighs" the customer's stated preferences based on observed behavior.
- Method of Organizing Human Activity. The court found strong parallels to other cases involving matchmaking and targeted advertising, citing the Federal Circuit's decision inTrinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355 (Fed. Cir. 2023), which held patents for matching users based on progressive polling to be ineligible. The court noted that "the practice of matching individuals for compatibility... is very similar to targeted advertising" and both were abstract ideas.
- Collecting and Analyzing Information. The claim "begins with collecting and storing data about a person's interests, and then provides for collecting additional data, analyzing that data, and producing an outcome based on the analysis." This pattern fits squarely within established precedent for abstract ideas.
- No Technological Improvement. Rejecting the patentee's arguments, the court found the claim did not improve computer functionality but merely used computers as tools to perform the abstract task of profile updating more quickly and at larger scale. The court distinguished cases such asEnfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016),andMcRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016),where genuine technological improvements were claimed.
- Functional Nature of the Claim. The court criticized the claim's "largely functional character," noting it merely recited the use of unspecified "sets of rules" to produce profile updates without explaining how these rules operate. This made the claim "effectively functional in nature" with "no specificity regarding the nature of the sets of rules."
- Preemptive Effect. Finally, the court observed that the claim had "potentially sweeping preemptive effects" as it would cover "virtually any method or system that uses a computer to assemble and update profiles of individual users of virtually any product or service."
Alice Step Two Analysis
At step two, the court rejected the patentee's argument that personalization constituted an inventive concept. The court noted that "personalization" was the very abstract idea identified in step one and could not supply the inventive concept. Following Supreme Court guidance that "merely implementing an abstract idea on a computer does not render an invention patent eligible," the court found no transformation of the abstract idea into patent-eligible subject matter.
The patentee's argument that the claim contained factual disputes underBerkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018),was rejected because it failed to identify any specific factual issues requiring resolution. The court concluded that there was "no factual determination that needs to be made or that would alter the conclusion that claim 10 is directed to unpatentable subject matter."
Why Is This Case Interesting?
This case is among the mine run of Section 101 decisions involving patents directed to rules-based analysis and processing of information. An aspect of the decision that makes it noteworthy is the distillation of Section 101 jurisprudence into six principles as noted above. For those who don't see patent eligibility cases on an ongoing basis, the statement of principles can serve as a ready reference to identify claims that may be vulnerable to a Section 101 challenge.
The patent claim's "two-rules" structure – in which the process involves applying two sets of rules to analyze the data created by the user – appears to represent an approach to claim drafting that is not unique to this patent. If so, this case is of interest in considering Section 101 issues to other patents that similarly claim use of a plurality of rules to analyze data.
For patentees, the court's rejection of the Berkheimer argument serves as a reminder of the need to be specific when opposing a Section 101 motion based on the purported existence of factual issues.
Finally, the decision also cites exhaustively to Federal Circuit cases, making it a virtual bibliography of current Section 101 precedent.
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