SKILLSURVEY, INC. v. CHECKSTER LLC
MEMORANDUM AND/OR OPINION. SIGNED BY HONORABLE C. DARNELL JONES, II ON 3/31/16. 3/31/16 ENTERED AND COPIES E-MAILED.(mbh, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
March 31, 2016
Pending before the Court is Defendant’s Motion to Dismiss this suit on the basis that
Plaintiff’s patent infringement claims fail as a matter of law because the asserted patent, United
States Patent No. 8,894,416 (the “’416 Patent”) entitled “SYSTEM AND METHOD FOR
EVALUATING JOB CANDIDATES” is invalid under 35 U.S.C. § 101 for lack of patenteligible subject matter. For the foregoing reasons, this Court agrees. This matter is dismissed.
Standard of Review
a. Motion to Dismiss
In deciding a motion to dismiss pursuant to Rule 12(b)(6), courts must “accept all factual
allegations as true, construe the complaint in the light most favorable to the plaintiff, and
determine whether, under any reasonable reading of the complaint, the plaintiff may be entitled
to relief.” Phillips v. County of Allegheny, 515 F.3d 224, 233 (3d Cir. 2008) (internal quotation
and citation omitted). After the Supreme Court’s decision in Bell Atlantic Corp. v. Twombly, 550
U.S. 544, 555 (2007), “[t]hreadbare recitals of the elements of a cause of action, supported by
mere conclusory statements, do not suffice.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). “A
claim has factual plausibility when the plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. at 678
(citing Twombly, 550 U.S. at 556). This standard, which applies to all civil cases, “asks for more
than a sheer possibility that a defendant has acted unlawfully.” Id. at 678; accord Fowler v.
UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009) (“[A]ll civil complaints must contain more
than an unadorned, the-defendant-unlawfully-harmed-me accusation.”) (internal quotation marks
b. Patent Eligibility
Under § 101, the scope of patentable subject matter includes “any new and useful
process, machine, manufacture or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions of this title.” 35 U.S.C. § 101.
Eligible subject matter does not include “laws of nature, natural phenomena, and abstract ideas.”
Diamond v. Diehr, 450 U.S. 175, 185 (1981). These exclusions should not be construed too
broadly however, because all inventions “at some level embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.” Mayo Collaborative Services v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) (“Mayo”). Thus, courts are tasked with
differentiating between patents that attempt to monopolize the “building blocks” of human
ingenuity and those that transform the building blocks into something more. Alice Corp. Pty. v.
CLS Bank Int'l, 134 S.Ct. 2347, 2354 (2014) (“Alice”) (citing Mayo, 132 S.Ct. at 1303). Validity
under § 101 is a question of law. Fort Properties, Inc. v. Am. Master Lease LLC, 671 F.3d 1317,
1320 (Fed. Cir. 2012).
In Mayo, the Supreme Court developed a two-step “framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those that claim patenteligible applications of those concepts.” Alice, 134 S.Ct. at 2355. First, the Court must determine
if the patent is based on one of the patent-ineligible concepts (e.g. laws of nature, natural
phenomena or an abstract idea). Id. (citing Mayo , 132 S. Ct. at 1296-97). If so, second, the Court
must consider “the elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements transform the nature of the claim into a patent-eligible
application.” Id. (quoting Mayo, 132 S. Ct. at 1297-98). This second step is a “search for an
‘inventive concept’- i.e., an element or combination of elements that is ‘sufficient to ensure that a
patent in practice amounts to significantly more than a patent upon the [ineligible] concept
itself.’” Alice, 134 S.Ct. at 2355 (quoting Mayo, 132 S.Ct. at 1294).
It is appropriate to address a § 101 challenge at the pleading stage. See, e.g., OIP
Technologies, Inc. v. Amazon.com Inc., 2012 WL 3985118, at *5 (N.D. Ca. 2012) (“OIP”)
(collecting cases); see also Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d
1266, 1273 (Fed. Cir. 2012) (“Bancorp”) (“[C]laim construction is not an inviolable prerequisite
to a validity determination under § 101.”). Where, as here, “the basic character of the claimed
subject matter is readily ascertainable from the face of the patent, the Court finds that it may
determine patentability at the motion to dismiss stage.” Internet Patents Corp. v. Gen. Auto. Ins.
Servs., Inc., 29 F. Supp. 3d 1264, 1268 (N.D. Cal. 2013) (“Internet Patents”) aff'd sub nom.
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015) (“Internet
Patents”); see id. (Mayer, J. concurring) (“Addressing 35 U.S.C. § 101 at the outset not only
conserves scarce judicial resources and spares litigants the staggering costs associated with
discovery and protracted claim construction litigation, it also works to stem the tide of vexatious
suits brought by the owners of vague and overbroad business method patents.”).
When deciding a motion to dismiss under 12(b)(6), the “court must consider only the
complaint, exhibits attached to the complaint, matters of public record, as well as undisputedly
authentic documents if the complainants claims are based upon these documents.” Mayer v.
Belichick, 605 F.3d 223, 230 (3d Cir. 2010). “[A] court may consider an undisputedly authentic
document that a defendant attaches as an exhibit to a motion to dismiss if the plaintiff’s claims
are based on the document.” Pension Ben. Guar. Corp. v. White Consol. Industries, Inc., 998
F.2d 1192, 1196 (3d Cir. 1993).
a. The ‘416 Patent
SkillSurvey, Inc. (“Plaintiff”) filed an Amended Complaint against Checkster LLC 1
(“Defendant”) for violating their United States Patent No. 8,894,416 (“’416 Patent”) under 35
U.S.C. § 1 et seq. (Dkt No. 8 [hereinafter AC] ¶ 1.) The ’416 Patent “relates to a human resource
management system, and more particularly to a system for collecting and analyzing information
from references identified by job candidates.” ’416 Patent cols. 1-2.
This patent comprises:
A system for collecting and analyzing survey data from reference providers
identified by a job candidate for use by an employer...The system includes a
candidate database that stores survey data which are provided by the reference
providers. A collection module running in the system sends an electronic
communication to the reference providers requesting them to complete the survey
questions and electronically receives the survey data. The electronic
communication preferably contains a URL link that takes the reference provider
to a dynamically generated webpage through which the survey data are entered.
Defendant notes in its filings that Checkster LLC has been dissolved. (MTD at 2 n. 1.) According to
Defendant, the proper entity for suit is Checkster, Inc. (MTD at 2 n. 1.) Plaintiff argues that “Checkster’s
dissolution papers were not filed with the California Secretary of State’s office until August 4, 2015, days
after being served with SkillSurvey’s FAC. Thus, SkillSurvey’s naming of Checkster LLC as a defendant
was indeed proper...” (Resp. at 7 n. 6.) Given that the pending Motion does not depend on resolution of
this issue, the Court will not endeavor to resolve it at this time.
An analysis module running in the system combines the received survey data
from the reference providers and generates a candidate report. In one aspect, the
candidate report is a confidential report which excludes identification of any
rating or comments by any reference providers. In another aspect, the system also
generates customized interview probe questions for use after the hiring, based on
the weak area that have been identified from the completed surveys in order to
assist the hiring manager to bring the new hires up to speed quickly and
’416 Patent cols. 1-2. The “Background of the Invention” section explains that the ’416 Patent
differs from “traditional reference checking methods such as telephone interviews,” because the
’416 Patent process is less costly, is done earlier in the hiring process, is “substantially
automated,” is anonymized, and provides “guidance for the hiring manager to further explore
areas of weakness in the candidate during the hiring process.” ’416 Patent cols. 1-2.
In granting the ’416 Patent, the United States Patent and Trademark Office stated that the
examiner allowed the patent because it was an “improved computer system programmed for
reference checking.” (Not. Of Allowance and Fee(s) Due, Dkt No. 18, Ex. 4 [hereinafter Not.] at
2.) The Notice further noted that the method/system was patented because it provided position
specific surveys, calculated statistical scores in competency skill groups, kept the data
confidential, and created statistical benchmarking scores. (Not. at 2.) The Notice specifically
mentioned that the application was also allowed “for the order/steps in which these limitations
take place,” including that “all the limitations take place before the interview is conducted.”
(Not. at 3.)
The ’416 Patent asserts twenty claims constituting method and system claims. ’416
Patent cols. 10-16. Method claims are within the statutory class of processes. 35 U.S.C. § 100(b).
Claims 1 and 11 are independent claims. Claim 1 explains a computer-implemented method that
sets up initial job specific survey questions for an applicant’s references, connects with the
references, collects the survey data provided by the references, anonymizes the survey data,
analyzes the survey data, and generates reports for the hiring manager based on a comparison of
the candidate’s survey results against other candidates, the hiring company’s own employees, or
other relevant industry databases, including generating statistical scores for the applicant in
competency skill groups, in that order and prior to the perspective applicant’s interview. ’416
Patent cols. 10-12.
Claim 11 explains how generic computer technology would implement Claim 1,
including a “specialize [sic] computer machine” with “a non-transient memory having at least
one region for storing particular computer executable program code; and at least one processor
for executing the particular program code stored in the memory...” ’416 Patent col. 13. The
ability to store information and to execute code are generic computer components. Beyond these
commonplace, generic computer requirements, Claim 11 exactly mimics Claim 1. See Alice, 134
S. Ct. at 2360 (“Put another way, the system claims are no different from the method claims in
substance. The method claims recite the abstract idea implement on a generic computer; the
system claims recite a handful of generic computer components con-figured to implement the
same idea.”). These generic computer and Internet components do not provide a meaningful
limitation “beyond generally linking the use of the [method] to a particular technological
environment.” Accenture Global Services, GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1341 (Fed. Cir. 2013) (internal citations omitted). Thus, Claims 1 and 11 are inextricably linked.
Id. (“[S]ystem claims that closely track method claims and are grounded by the same meaningful
limitations will generally rise and fall together.”).
The remaining claims are dependent on either Claim 1 or 11. Claims 2-10 are dependent
on Claim 1. Clams 12-20 are dependent on Claim 11. Claims 2-5, 7, 12-15, and 17 explain how
the method/system will create an average statistical score for each applicant based on the
applicant’s references’ survey answers and will benchmark the average statistical score against
company-wide and industry-wide data. ’416 Patent cols. 12, 15. Claims 8 and 18 explain that the
computer-implemented method/system will identify whether the job being applied for is a
management level position. ’416 Patent col. 12. Claims 6 and 16 provide that the computerimplemented method/system will identify, validate, and store the email addresses of the
applicant-identified references, and will email the references with personalized requests to fill
out the surveys. ’416 Patent col. 12. Claims 9-10 and 19-20 explain that the computerimplemented method will provide unique identifiers for each of the references and will send the
references URL links encoded with the references’ unique identifiers. ’416 Patent cols. 12-13.
The limitations in the dependent claims are slight variations on the limitations contained in the
independent claims. They do not provide limitations beyond those already encapsulated in the
two independent claims.
The Court will analyze Claim 1 as representative of all of the claims. C.f. Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1348 (Fed.Cir.
2014) (“Content Extraction”) (holding that where all of the claims are directed to the same
abstract idea, “addressing each of the asserted patents...[is] unnecessary”); Planet Bingo, LLC v.
VKGS LLC, 576 F. App'x 1005, 1007 (Fed. Cir. 2014) (“Planet Bingo”) (affirming district
court’s finding that “[t]he system claims recite the same basic process as the method claims, and
the dependent claims recite only slight variations on the independent claims”); see also
Intellectual Ventures I LLC v. Erie Indem. Co., 2015 WL 5686643, at *21 (W.D. Pa. 2015)
(“Intellectual Ventures”) (collecting cases); Smart Sys. Innovations, LLC v. Chicago Transit
Authority, 2015 WL 4184486, at *4 (N.D. Ill. 2015) (“Smart Sys.”) (“[W]here a patent’s claims
are substantially similar and linked to the same abstract idea, courts may look to representative
claims.”) (internal quotations omitted).
b. Procedural History
Plaintiff markets the ’416 Patent as Pre-Hire 360®. (AC ¶ 8.) Defendant makes and sells
automated reference checking systems and services, provided through its website. (AC ¶¶ 5, 9.)
Plaintiff alleges that Defendant has and continues to knowingly use Plaintiff’s ’416 Patent
without authorization. (AC ¶¶ 9-26.)
Defendant filed a Motion to Dismiss asserting that the case should be dismissed because
the ’416 Patent is invalid under § 101. (Dkt No. 16 [hereinafter MTD] at 10-19.) Plaintiff
responded that the ordered combination of the claimed steps constituted an inventive concept.
(Dkt No. 18 [Resp.] at 8-9, 15-21.) Defendant replied arguing that no inventive concept was
present. (Dkt No. 26 [Rep.] at 3-6, 9 n. 3.)
a. Burden of Proof
Under 35 U.S.C § 282, patents are presumed valid and the burden of proof for
establishing invalidity rests on the party asserting such invalidity. Patent invalidity defenses must
be proved by clear and convincing evidence due to the presumption of validity. Microsoft Corp.
v. i4i Ltd. P’ship, 131 S.Ct. 2238, 2244-53 (2011).
Lower courts have disputed the applicability of the presumption of validity in cases that
challenge validity under § 101. In a recent concurrence to a Federal Circuit opinion, Judge
Haldane Robert Mayer stated that no presumption of validity should attach when assessing § 101
matters because: (1) the United States Patent and Trademark Office “for many years applied an
insufficiently rigorous subject matter eligibility standard,” and (2) the recent Supreme Court
cases that address § 101 have not mentioned or applied the presumption of eligibility.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 720-21 (Fed. Cir. 2014) (Mayer, J. concurring)
(“Ultramercial”). Without authoritative law binding the lower courts, various courts have
adopted Judge Mayer’s approach and have not afforded a patent challenged under § 101 the
presumption of validity. See, e.g., Wireless Media Innovations, LLC v. Maher Terminals, LLC,
100 F.Supp.3d 405, 411 (D.N.J. 2015) (“[T]o apply a ‘clear and convincing’ standard as to
subject matter eligibility at the motion to dismiss stage, the Court would effectively create a near
impossible threshold for a defendant to clear when assessing a patent’s subject matter under the
test articulated in Alice.”); Modern Telecom Sys. LLC v. Earthlink Inc., 2015 WL 1239992, at *7
(C.D. Cal. 2015); OpenTV, Inc. v. Apple, Inc., 2015 WL 1535328, at *3 (N.D. Cal. 2015)
(“OpenTV”); Datatrak Internat’l, Inc. v. Medidata Solutions, Inc., 2015 WL 6870109, at * 2
(N.D. Ohio 2015).
The prevailing argument on the other side of the split is that the Supreme Court’s failure
to differentiate or distinguish the analysis under § 101 from analyses under §§ 102 and 103 (such
sections indisputably covered by the presumption) implies that the presumption also applies to §
101. See, e.g., Listingbrook, LLC v. Market Leader, Inc., 2015 WL 7110940, at * 5 (M.D. N.C.
2015) (holding that “[a]bsent a controlling opinion from the Supreme Court or Federal Circuit
holding that the presumption of validity and clear and convincing standard of proof do not
extend to § 101 challenges, the Court will apply both the presumption and the standard of proof
in this case”); see also Exergen Corporation v. Brooklands Inc., 2015 WL 5096464, at *2 (D.
Mass. 2015); Tenon & Groove, LLC v. Plusgrade S.E.C., 2015 WL 82531, at *3 (D. Del. 2015);
Ameritox, Ltd. v. Millennium Health, LLC, 88 F.Supp.3d 885, 901-02 (W.D. Wis. 2015);
Tranxition, Inc. v. Lenovo (U.S.) Inc., 2015 WL 4203469, at *4-5 (D. Oregon 2015); Affinity
Labs of Texas, LLC v. Amazon.com, Inc., 2015 WL 3757497, at *5 n. 4 (W.D. Tex. 2015); Tuxis
Technologies, LLC v. Amazon.com, Inc., 2014 WL 4382446, at * 1 (D. Del. 2014) (“Tuxis”);
Intellectual Ventures I LLC v. Manufacturers and Traders Trust Co., 76 F.Supp.3d 536, 540 (D.
Del. 2014) (“Intellectual Ventures”).
Despite finding the counter-argument persuasive, the Court follows the weight of
authority and holds that patent invalidity defenses under § 101 must be proved by clear and
convincing evidence due to the presumption of validity. 2
b. Lack of Patentable Subject Matter
i. The ’416 Patent is drawn to an abstract idea.
The first step in determining patent-eligibility is whether the patent is based on a patent
ineligible concept. Alice, 134 S.Ct. at 2355. Patent ineligible concepts include laws of nature,
natural phenomena and abstract ideas. Id. Defendant asserts that the ’416 Patent’s purpose
(conducting job applicant reference checks) is a mental process that is a “time-honored,
‘longstanding commercial practice’ and ‘method of organizing human activity.’” (MTD at 12.)
Although Plaintiff states that they do not concede this point, they bring forth no argument to
dispute Defendant’s claim. (Resp. at 12.) The Court finds that the ’416 Patent is drawn to an
The ’416 Patent has a very simple premise: anonymously surveying references and
compiling the survey data before interviewing applicants will help companies only interview the
best applicants. The ’416 Patent is “trying to achieve,” Enfish, LLC v. Microsoft Corp., 56
Plaintiff makes numerous arguments in its briefings regarding the fact that the ’416 Patent was issued after Alice.
Plaintiff explains that finding that the post-Alice issued’416 Patent was directed to an abstract idea would be
“unprecedented.” (Resp. at 2.) The fact that the ’416 Patent was issued post-Alice neither protects it from an
invalidity challenge nor causes the burden of proof to be heightened. First, if it were determinative whether the
patent was filed pre- or post- Alice, “any patent issued post-Alice would be inoculated from invalidity under Section
101. That is not the case.” Collarity, Inc. v. Google Inc., 2015 WL 7597413, at *11 (D. Del. 2015). Second, the
standard of review is clear and convincing evidence. The standard is not clear and convincing for pre-Alice patents,
but clearer and more convincing for post-Alice patents. The fact that the ’416 Patent was issued after Alice does not
affect the Court’s analysis in any way.
F.Supp.3d 1167, 1173 (C.D. Cal. 2014) (“Enfish”), the abstract idea of reference checking job
applicants. The idea at the “heart” of the patent, Ultramercial, 772 F.3d at 714, is the abstract
idea of anonymously surveying prior employers within the context of job applications.
Abstract ideas include methods or processes that can be done by human thought alone.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). “[M]ethods
which can be performed mentally or which are the equivalent of human mental work, are
unpatentable abstract ideas - the ‘basic tools of scientific and technological work’ that are open
to all.” Id. at 1371 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). An abstract concept
rendered through computer-aided processes remains abstract. Internet Patents, 790 F.3d at 1347
(collecting cases). Where every aspect of the patented method could be carried out manually,
courts tend to find that the method is too abstract to be patentable.
In this case, the claims, alone and in combination, could all be completed by the human
mind. 3 A pen and paper version of the claimed method would not be particularly efficient, but it
could be completed. The HR representative could improve upon the efficiency of this process by
using generic email and word processing programs. The claimed steps can easily “be carried out
in existing computers long in use, no new machinery being necessary. And, as noted, they can
also be performed without a computer.” Gottschalk, 409 U.S. at 66 (1972).
For example, a human resources (“HR”) representative at the hiring company could develop position-specific
survey questions. The HR representative could collect references’ phone numbers by speaking in person or on the
telephone with all applicants. The HR representative could call the applicants’ references. During each call, the HR
representative could keep the name of the hiring company anonymous. Further, the HR representative could assure
the reference that his or her responses would be reported anonymously. Using pen and paper, the HR representative
could collect responses to the survey questions, physically removing any identifying information. Pursuant, to the
’416 Patent method, the HR representative would need to create average statistical scores for each applicant. These
scores are simply the average of the collected numerical responses. These types of mathematical calculations could
easily be performed by hand. Through the use of a hand-drawn table, the HR representative could then compare the
average score for each applicant against other applicants and other employees of the company. The HR
representative could report the top job applicants for next round interviews to another member of HR without ever
revealing the identity of the references.
Simply put, storing and analyzing responses from references and making hiring
recommendations on the basis of the references’ answers is a well-known method of organizing
human activity. At its “heart,” these claims represent the abstract idea of soliciting, storing, and
analyzing of information provided by references in such a way as to hedge the risk of receiving
incomplete or inaccurate responses from references during the hiring process. See, e.g., Alice,
134 S.Ct. at 2351-52 (holding patent to be abstract where it was directed to abstract concept of
intermediated settlement); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (same, patent direct to
abstract idea of “risk hedging”); Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F.
App’x 988, 992 (Fed. Cir. 2014) (“[T]he idea of collecting information in classified form, then
separating and transmitting that information according to its classification is an abstract idea.”);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1397 (Fed. Cir. 2015)
(same, patent directed to budgeting) (“Intellectual Ventures”); Content Extraction, 776 F.3d at
1347 (same, patent directed to collecting data, recognizing certain collected data, and storing
recognized data); Planet Bingo, 576 F. App'x at 1007 (same, patent directed to solving a
tampering problem and minimizing security risks during bingo ticket purchases); Accenture, 728
F.3d at 1344 (same, patent directed toward “generating tasks [based on] rules...to be completed
upon the occurrence of an event.”); Intellectual Ventures, 2015 WL 5686643, at *24 (same,
patent for “gathering, storing, and acting on data based on predetermined rules”); In re TLI
Communications LLC Patent Litig., 87 F.Supp.3d 773, 787 (E.D. Va. 2015) (“[T]he taking,
organizing, classifying, and storing of photographs...is a common practice...”). Of particular
note, in Walker Digital, the court found that the method/system claims related to a computerized,
anonymized headhunting or matchmaking service was directed to an abstract idea as all of the
patent’s “steps can and routinely are performed, by, for example, human job headhunters.”
Walker Digital, LLC v. Google, Inc., 66 F.Supp.3d 501, 509-10 (D. Del. 2014) (“Walker
Digital”). The ’416 Patent is directed to an abstract idea.
ii. The ’416 Patent does not contain an inventive concept.
The presence of an abstract idea does not, in and of itself, render an idea patent ineligible.
Alice, 134 S. Ct. at 2354. An idea is not patentable, however, “unless the process has additional
features that provide assurance that the process is more than a drafting effort designed to
monopolize” the process. Mayo, 132 S. Ct. at 1297. Patents will be held to be valid where an
additional element, or an inventive concept, transforms the abstract idea into something more. Id.
at 2355. This requires evaluating the elements individually and as an ordered combination. Id.
An inventive concept will not be found where the activity is “well-understood, routine, or
conventional.” Mayo, 132 S.Ct. at 1299.
In this case, Plaintiff argues that the ’416 Patent is an inventive concept because, first, the
method/system uses “specially configured ‘independent’ computer technology” to secure
confidentiality, while being “faster and more efficient” than traditional methods. (Resp. at 1521.) Second, the method/system reflects a “new combination of steps” performed before the
applicant’s interview, thereby achieving “a large difference in effectiveness.” (Resp. at 15-21.)
However, argues Plaintiff, the method is not inventive “just in terms of automation and
processing speed or efficiency but [rather in terms of] overall utility, accuracy, quality of hire
and long-term productivity, retention and cost savings.” (Resp. at 26 (internal citations omitted.))
Plaintiff’s contention that the ’416 Patent improves the “accuracy, quality of hire and long-term
productivity” relates to Plaintiff’s assertion that the method asks better questions and gets better
answers. Underlying these assertions are the same considerations listed above: efficiency and
anonymity. First, Plaintiff has, obviously, not patented the questions themselves, nor the research
underlying the questions. Rather, Plaintiff’s alleged improvement on the reference questions
relates to the alleged efficiency of the method through computerization. The questions are
improved because they ask for numerical scoring, and thus can be quickly averaged and
benchmarked against other applicants. Second, Plaintiff’s benchmark of “long-term
productivity” is related to Plaintiff’s assertion that its method’s promise of anonymity ensures
more frank answers from references. When references are honest about the qualifications of a
former employee, prospective employers are obviously better able to predict the potential
productivity of applicants. Plaintiff’s arguments about inventiveness boil down to the efficiency
and the anonymization caused by the computerization, and the novelty of both the ordered
collection of the steps and the timing of the process. The Court finds none of these arguments
1. Use of generic computer technology does not render this
otherwise abstract idea inventive.
The computer and Internet technologies described in the patent are generic. The specified
computer is “any computer such as a WINDOWS-based or UNIX-based personal computer,
server, workstation or a mainframe, or a combination thereof.” ’416 Patent col. 3. The computer
is linked to the Internet through “a LAN, WAN, or fiber optic, wireless or cable link which
receives information from and send information to other computers.” ’416 Patent col. 3. The
webpages for the method and system “are generated by a conventional database web page
generating engine.” ’416 Patent col. 4.
Requiring the use of generic computer technology does not create an inventive concept.
Alice, 134 S.Ct. at 2358. In Alice, the patent claims at issue “facilitate[d] the exchange of
financial obligations between two parties by using a computer system as a third-party
intermediary.” Id. at 2352. After finding that the patent was based on an abstract idea, the
Supreme Court found that the implementation of a computer did not transform it into patent14
eligible idea. Id. at 2358. Claims that provide an abstract concept and “apply it with a computer”
should be rejected. Id. Further, a dependent claim cannot add an inventive concept where the
claim simply sits “the ineligible concept in a particular technological environment.” Internet
Patents, 790 F.3d at 1349 (citing Bancorp, 687 F.3d at 1273).
In this case, the addition of computerization to the abstract concept of reference checking
does not add an inventive concept. See, e.g., Mortgage Grader, Inc. v. Costco Wholesale Corp.,
89 F.Supp.3d 1055 (C.D. Cal. 2015) (finding that the method was not patentable because it could
be accomplished by a “human broker taking the information by hand and calculating the credit
grading by hand or by looking at a table”). It is inarguable that using computer technology would
necessarily make the claimed method more efficient. However, adding efficiency to a longstanding process through computerization also does not render an abstract idea patentable.
“[R]elying on a computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.” OIP, 788 F.3d at 1363; see also East Coast Sheet
Metal Fabricating Corp. v. Autodesk, Inc., 2015 WL 226084, at *7 (D.N.H. 2015) amended in
part, 2015 WL 925614 (D.N.H. 2015) (“[W]hen the alleged innovation involves the use of a
generic computer to do what computers typically do, i.e., speed up a process by eliminating the
need for human activity, that innovation is not an invention eligible protection.”).
However, there is an exception to the general computerization case law. “[W]hen claims
provide a specific computing solution for a computing problem, those claims should generally be
patentable...” Cal. Institute of Tech. v. Hughes Comm. Inc., 59 F.Supp.3d 974, 993 (C.D. Cal.
2014); see also DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245, 1256-57 (Fed. Cir. 2015)
(“[T]hese claims stand apart because they do not merely recite the performance of some business
practice known from the pre-Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”); DataTern, Inc. v.
Microstrategy, Inc., 2015 WL 5190715, at *8 (D. Mass. 2015) (finding that a computer-oriented
technology could be patentable where it was “directed at solving a problem that specifically
arises in the realm of computing”).
In this case, the problem being solved by the use of computer technology does not solve a
specific computing problem. The issues associated with reference checking (e.g., untruthful or
incomplete answers from references, difficulty comparing applicants), remain from an
increasingly distant “pre-Internet world.” The ’416 Patent amounts to nothing more than the
steps for checking references with the added premise of technology. Because the concept is
equivalent to the “apply it with a computer” language rejected in Alice, it cannot be said to be an
inventive concept. 134 S. Ct. at 2358.
None of the limitations adds inventiveness to this abstract idea. Taking the average of a
collection of numerically scored answers and comparing them to other average scores constitutes
basic math that any elementary school educated human or generically programmed computer can
accomplish. See, e.g. Enfish, 56 F. Supp. 3d at 1176 (“Tables continue to be elementary tools
used by everyone from school children to scientists and programmers.”); see also Intellectual
Ventures, 76 F.Supp.3d at 542 (“[T]he use of a computer in an otherwise patent-ineligible
process for no more than its most basic function – making calculations or computations-fails to
circumvent the prohibition against patenting abstract ideas and mental processes.”). Taking an
applicant’s average score and benchmarking it against other applicants and industry statistics is
nothing more than a simple visual comparison with the added efficiency of computer technology.
See, e.g., Walker Digital, 66 F. Supp. 3d at 515 (holding that dependent claims that provided
comparisons of persons did not add inventive concept). “The assigning of unique identification
codes, providing access to URLs, and generating URLs describe routine, conventional activity of
how computers communicate with each other via the Internet.” Essociate, Inc. v. Clickbooth.com
LLC, 2015 WL 1428919, at *8 (C.D. Cal. 2015). “That a computer receives and sends the
information over a network - with no further specification – is not even arguably inventive.”
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). “[T]he use of the Internet
is not sufficient to save otherwise abstract claims for ineligibility under § 101.” Ultramercial,
Inc., 772 F.3d at 716.
Most importantly, using generic computer technology to address a pre-existing need for
confidentiality in a long-standing practice does not render an abstract idea into an inventive
concept. See Walker Digital, 66 F. Supp. 3d at 511; OpenTV, 2015 WL 1535328, at *5. In
contrast, where computer technology is being used to address a need for confidentiality due to
deficiencies related to generic computer technology, the addition of confidentiality may render
an abstract idea into an inventive concept. See, e.g., Mobile-Plan-It, LLC v. Facebook, Inc., 2015
WL 1801425, at *4 (N.D. Cal. 2015) (“Mobile-Plan-It”).
In this case, Plaintiff explains, the addition of confidentiality “permits more candid
feedback from references and provides a report to the employer that is more useful than
information gained from traditional, well-known, routine, or conventional methods of reference
checking.” (Resp. at 20.) The addition of confidentiality through generic computing technology
is not addressing a problem derived from that self-same use of generic computing technology. As
the court in Mobile-Plan-It explained, differentiating itself from Walker Digital, in Walker
Digital, “the problem being addressed plainly existed prior to and apart from any technological
solution offered.” Mobile-Plan-It, 2015 WL 1801425, at * 8. The same is true here. The patent
addresses “the pervasive problem of making the right talent decision.” (Resp. at 21.) It is an
obvious, and longstanding problem that when asked to speak on the record, prior employers are
unlikely to be fully forthright about former employees. Assurances of confidentiality assuage
these fears. This is not a problem that computer technology caused, like in Mobile-Plan-It. This
is a problem that has long existed but that computer technology can fix more efficiently, like in
Any other argument about how confidentiality improves the process sounds in another
version of the argument that the addition of computer technology expedites or simplifies the
process. As previously addressed, such arguments are insufficient to create an inventive concept.
All these steps together, comprising anonymously collecting survey data, summarizing
survey data, and presenting survey data, are ways to implement the abstract idea of referencechecking with generic computer technology. See Intellectual Ventures, 76 F.Supp.3d at 545
(“The steps of storing data from a user, listing data, and presenting summary data (configured in
a table), however, are ways to implement the abstract idea with routine and conventional
computer activity.”) (quoting Ultramercial, 772 F.3d at 716) (internal citations omitted)). In
conclusion, the generic computer technology here only makes the abstract idea more efficient,
not more inventive.
2. The novelty of the idea does not render it an innovative
Plaintiff argues that the claimed invention “transform[s] what was traditionally an
afterthought and the least relevant step in the hiring process – reference-checking into one of the
earliest, threshold, and most important steps that takes places before the interview...and
combining it for the first time in history with...over a decade of behavioral research and science.”
(Resp. at 9.) Thus, Plaintiff is arguing that the novelty of the combination of steps and the timing
of those steps renders the abstract patentable. The Court finds neither argument persuasive.
First, novelty alone does not add inventiveness. See Ultramercial, 772 F.3d at 714-15;
see also Diamond, 450 U.S. at 189 (stating that “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable subject matter”). An
inventive concept is not present simply because a claim or patent is not well-known or not
routine. Ultramercial, 772 F.3d at 715. “It matters not that, even if the individual elements are
not individually innovative, nobody before used them all together in [a] new setting....” Smart
Sys., 2015 WL 4184486, at *6 (internal citations omitted).
A novel combination of steps cannot alone render an abstract idea patentable. In certain
circumstances, “a new combination of steps in a process may be patentable even though all the
constituents of the combination were well known and in common use before the combination
was made.” Diamond, 450 U.S. 175, at 188. However, the only context in which courts tend to
find that a novel combination is patentable, even though its component parts are not, is in the
context of manufacturing. In Diamond, for example, the ordered combination of the claimed
steps was literally greater than the sum of their parts. It was “part of a transformative,
manufacturing process.” Smart Sys., 2015 WL 4184486, at *6. Here, the novel ordered
combination is simply a “grouping of conventional steps and extant technology.” Id. (quoting
Ultramercial, 772 F.3d at 716-17 (internal citations omitted)). Further, even assuming that this
reference checking process is wholly novel in the field of human resources, it is not inventive for
that fact alone. See, e.g., Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1366
(Fed. Cir. 2015) (“An abstract idea does not become nonabstract by limiting the invention to a
particular field of use...”).
Second, Plaintiff repeatedly asserts that the ordered combination is inventive because it
takes place before the job applicant is interviewed. (Resp. at passim.) This argument is
unavailing. An abstract idea does not become inventive due to its timing in a greater process.
Limiting the abstract idea to pre-interview timing cannot render it inventive. “[L]imiting an
abstract idea to one field of use or adding token postsolution components did not make the
concept patentable.” Bilski, 561 U.S. at 612 (citing Parker v. Flook, 437 U.S. 584 (1978)
(“Flook”)). For example, in Flook, the Supreme Court held that an algorithm could not be
rendered patentable simply by adding a final step after application of the algorithm. Flook, 437
U.S. at 590. By way of example, the Supreme Court explained that:
the Pythagorean theorem would not have been patentable, or partially patentable, because
a patent application contained a final step indicating that the formula, when solved, could
be usefully applied to existing surveying techniques. The concept of patentable subject
matter under § 101 is not “like a nose of wax which may be turned and twisted in any
Flook, 437 U.S. at 590-91 (quoting White v. Dunbar, 119 U.S. 47, 51 (1886)). Similarly, in this
case, an abstract idea of reference checking is not rendered patentable because of the addition of
a final step of using the reference checking to make interview decisions.
Consider: a client of Plaintiff’s decides, without telling Plaintiff, to use Plaintiff’s
services to confirm hiring choices after all the interviews have been completed (rather than using
it to select interviewees). Such client would arguably not be using Plaintiff’s patented idea, even
though the client would be using Plaintiff’s software, web interface, technology and survey
questions. Consider: what if Defendant used Plaintiff’s identical software, web interface,
technology, and survey questions (trademark and copyright issues aside), but encouraged its
customers to use the services to confirm hiring choices after interviews? Arguably, Defendant
would not be infringing on Plaintiff’s patent. Yet, if Defendant engaged in the same behavior but
encouraged the use of the product before the interview, there would be infringement. The idea
that an invention could see-saw from patented to unpatented simply on the basis of the timing of
the client’s use of the invention does not comport with patent law.
Furthermore, enforcing this patent would necessarily curb innovation in reference
checking. A hypothetical will prove instructive. See, e.g., Tuxis, 2014 WL 4382446, at *5
(providing a hypothetical to demonstrate preemption). Company XYZ decides to use a free,
generic online survey tool to survey references. Company XYZ does not provide an opportunity
for the reference to provide identifying information, and ensures that all information be kept
confidential. Company XYZ then collects the survey answers, and compares candidates to each
other on the candidates’ core competencies. Company XYZ does this all before interviewing the
Would Plaintiff have a cognizable claim against Company XYZ for violation of their
patent? Most likely, yes. Yet, what if Company XYZ could do a substantially better job
inventing position-specific survey questions? What if Company XYZ’s software innovated how
the survey responses were integrated into other parts of Company XYZ’s human resources
internal databases and systems? Such innovation would be preempted by this patent. Moreover,
this hypothetical is simply about a company’s internal system, it does not even address the
innovations outright competitors to Plaintiff (like Defendant) could create. “To allow the claim
to survive would disproportionately risk preempting a building block of human interaction,
retarding rather than promoting progress, contrary to the very purpose patents are granted.”
Walker Digital, 66 F.Supp.3d, at 511.
The ’416 Patent patents a time-honored process: reference checking. Plaintiff has
arguably improved this process, making it more efficient, soliciting more helpful, data-driven
responses, and improving the quality of the recommendations based on reference feedback. The
improvements made by Plaintiff, however, are not patentable. Taking this traditional process and
computerizing it is not enough. Anonymizing the data is not enough. Encouraging clients to use
the method before interviewing applicants is not enough. In light of the foregoing, the claims of
the ’416 Patent are directed to a patent-ineligible subject matter under 35 U.S.C. § 101. As such,
Defendant’s Motion to Dismiss is granted. This case is dismissed.
BY THE COURT:
/s/ C. Darnell Jones, II
C. Darnell Jones, II
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