Case: 19-1917     Document: 55    Page: 1   Filed: 06/03/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                   ______________________

      BRITISH TELECOMMUNICATIONS PLC,
                Plaintiff-Appellant

                             v.

  IAC/INTERACTIVECORP, MATCH GROUP, INC.,
            MATCH GROUP, LLC,
              Defendants-Appellees

                TINDER, INC., VIMEO, INC.,
                         Defendants
                   ______________________

                         2019-1917
                   ______________________

     Appeal from the United States District Court for the
 District of Delaware in No. 1:18-cv-00366-WCB, Circuit
 Judge William C. Bryson.
                  ______________________

                    Decided: June 3, 2020
                   ______________________

     DANIEL A. BOEHNEN, McDonnell, Boehnen, Hulbert &
 Berghoff, LLP, Chicago, IL, for plaintiff-appellant. Also
 represented by JEFFREY PALMER ARMSTRONG, GRANTLAND
 GILBERT DRUTCHAS, GEORGE THOMAS LYONS, III.

    ROBERT LOUIS HAILS, JR., Baker & Hostetler LLP,
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 2      BRITISH TELECOMMUNICATIONS    v. IAC/INTERACTIVECORP



 Washington, DC, for defendants-appellees.       Also repre-
 sented by T. CY WALKER.
                  ______________________

     Before DYK, TARANTO, and HUGHES, Circuit Judges.
 TARANTO, Circuit Judge.
     British Telecommunications PLC owns U.S. Patent
 No. 6,397,040, which describes and claims methods, sys-
 tems, and apparatuses for selecting information sources to
 provide to a user via a telecommunication system. British
 Telecom sued IAC/InterActiveCorp and several of its sub-
 sidiaries (collectively, IAC) in the United States District
 Court for the District of Delaware, alleging that IAC in-
 fringed six British Telecom patents, including the ’040 pa-
 tent. The district court held that all claims of the ’040
 patent are invalid under 35 U.S.C. § 101. British Telecom-
 munications PLC v. IAC/InterActiveCorp, 381 F. Supp. 3d
 293 (D. Del. 2019) (Merits Opinion). British Telecom ap-
 peals. We affirm.
                              I
                              A
     The ’040 patent, titled “Telecommunications Appa-
 ratus and Method,” claims priority to a Patent Cooperation
 Treaty application filed in 1998, which itself claims the
 benefit of a United Kingdom patent application filed in
 1997. The ’040 patent states, as background facts, that in
 the late 1990s people increasingly wanted information
 communicated to their mobile devices, ’040 patent, col. 1,
 lines 12–29, that the volume of information transmitted
 over communication systems was increasing, id., col. 1,
 lines 25–29, and yet the radio frequency channels used for
 mobile communication were ill suited for transmitting
 large amounts of information, id., col. 1, lines 36–41. As a
 solution, the ’040 patent describes a method of transmit-
 ting information to terminals that involves tracking a
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 BRITISH TELECOMMUNICATIONS    v. IAC/INTERACTIVECORP        3



 user’s location, generating a “shortlist” of information
 sources relevant to the user’s location, and transmitting
 that shortlist to the user’s terminal. Id., col. 2, line 53,
 through col. 3, line 2.
     All 44 claims of the ’040 patent are at issue in this ap-
 peal. Claim 1 is illustrative for purposes of deciding the
 issues on appeal:
     1. A method of selecting information sources from
        which information is provided to users via a tel-
        ecommunications system, said method com-
        prising:
     tracking the location of a user in the system by re-
         ceipt of tracking information for said user;
     accessing location data indicating localities in
         which information from the respective sources
         is deemed to be relevant;
     generating a shortlist of information sources for
        said user on the basis of said tracking infor-
        mation and said location data; and
     transmitting said shortlist to a terminal associated
         with said user so as to allow said user to select
         an information source of interest and thereby
         to access information from said source.
 Id., col. 12, lines 35–50.
                              B
     In March 2018, British Telecom filed a complaint in the
 District of Delaware, alleging that IAC infringed six Brit-
 ish Telecom patents, including the ’040 patent. IAC moved
 to dismiss the complaint under Federal Rule of Civil Pro-
 cedure 12(b)(6), arguing that British Telecom had failed to
 plead facts that made infringement plausible for two of the
 patents and that the other four patents, including the ’040
 patent, claim subject matter not eligible for patenting
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 4      BRITISH TELECOMMUNICATIONS     v. IAC/INTERACTIVECORP



 under 35 U.S.C. § 101. The district court denied dismissal
 as to the two patents for which IAC challenged the infringe-
 ment allegations, Merits Opinion, 381 F. Supp. 3d at 300–
 03, but granted dismissal as to the remaining four patents
 for which IAC argued lack of eligibility under § 101, id. at
 308–22. Subsequently, acting under Federal Rule of Civil
 Procedure 21, the district court severed the count of the
 complaint concerning the ’040 patent and entered a final
 judgment.        British Telecommunications PLC v.
 IAC/InterActiveCorp, No. 1:18-cv-00366-WCB, 2019 WL
 1765225, at *5–6 (D. Del. Apr. 22, 2019).
    British Telecom timely appealed. We have jurisdiction
 pursuant to 28 U.S.C. § 1295(a)(1).
                               II
     On appeal, British Telecom argues that the claims of
 the ’040 patent are not directed to an abstract idea and, in
 any event, include inventive concepts. British Telecom fur-
 ther contends that the district court erred in holding all the
 ’040 patent claims ineligible when the court and IAC sub-
 stantively addressed only claim 1.
     We review Rule 12(b)(6) dismissals under the law of the
 appropriate regional circuit, Aatrix Software, Inc. v. Green
 Shades Software, Inc., 882 F.3d 1121, 1124 (Fed. Cir.
 2018), here the Third Circuit, which reviews such dismis-
 sals de novo, Newark Cab Association v. City of Newark,
 901 F.3d 146, 151 (3d Cir. 2018). Like the district court,
 we must “accept all factual allegations in the complaint as
 true and construe those facts in the light most favorable to
 the plaintiffs.” Newark Cab, 901 F.3d at 151.
     Section 101 provides that “[w]hoever invents or discov-
 ers any new and useful process, machine, manufacture, or
 composition of matter, or any new and useful improvement
 thereof, may obtain a patent therefor.” 35 U.S.C. § 101.
 But the provision “contains an important implicit excep-
 tion: Laws of nature, natural phenomena, and abstract
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 BRITISH TELECOMMUNICATIONS    v. IAC/INTERACTIVECORP        5



 ideas are not patentable.” Alice Corp. v. CLS Bank Int’l,
 573 U.S. 208, 216 (2014) (internal quotation marks omit-
 ted). A claim is invalid under section 101 where (1) it is
 “directed to” a patent-ineligible concept, such as an ab-
 stract idea, and (2) the particular elements of the claim,
 considered “both individually and as an ordered combina-
 tion,” do not add enough to “transform the nature of the
 claim into a patent-eligible application,” i.e., do not set
 forth an “inventive concept.” Alice, 573 U.S. at 217 (inter-
 nal quotation marks omitted); SAP America, Inc. v. In-
 vestPic, LLC, 898 F.3d 1161, 1166–67 (Fed. Cir. 2018).
                               A
      The claims of the ’040 patent are directed to an abstract
 idea: “providing lists of location-specific information
 sources to users based on their location.” Merits Opinion,
 381 F. Supp. 3d at 311 (internal quotation marks omitted).
 We have previously held that tailoring the provision of in-
 formation to a user’s characteristics, such as location, is an
 abstract idea. Intellectual Ventures I LLC v. Capital One
 Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015); see Af-
 finity Labs of Texas, LCC v. Amazon.com Inc., 838 F.3d
 1266, 1271 (Fed. Cir. 2016). Despite British Telecom’s con-
 tentions, the ’040 patent claims are not directed to any im-
 provement in how a computer or communication network
 functions but merely use computers as tools to implement
 an independently abstract idea. See Electric Power Group,
 LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
 The claims here do not differ materially from those we have
 held directed to abstract ideas.
                               B
     The claims do not pass muster under the second step of
 the Alice inquiry because they do not set forth an inventive
 concept that would transform their subject matter into
 something more than the abstract idea. Claim 1 recites
 only generic computer hardware—a “telecommunications
 system” and “terminal,” ’040 patent, col. 12, lines 35–50—
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 6      BRITISH TELECOMMUNICATIONS      v. IAC/INTERACTIVECORP



 as performing functions that the ’040 patent’s specification
 admits were conventional, id., col. 1, line 12, through col.
 2, line 32. “Nothing in the claims, understood in light of
 the specification, requires anything other than off-the-
 shelf, conventional computer, network, and display tech-
 nology for gathering, sending, and presenting the desired
 information.” Electric Power, 830 F.3d at 1355. Such
 claims fail under Alice.
                               C
     The district court did not err in holding all the claims
 of the ’040 patent invalid. The court correctly determined
 that IAC substantively challenged all the ’040 patent
 claims. Merits Opinion, 381 F. Supp. 3d at 322; see J.A. 590
 (“The ’040 Patent contains 44 claims, of which five are in-
 dependent claims. Because [British Telecom] asserts only
 claim 1 in its [first amended complaint], [IAC’s] analysis
 addresses that claim. The analysis presented herein, how-
 ever, applies equally to all claims of the ’040 Patent.”). Alt-
 hough British Telecom disputed that claim 1 was
 representative, J.A. 760 n.5, it presented no separate argu-
 ment for the eligibility of any claim aside from claim 1, see
 J.A. 760–66. Because British Telecom did not present any
 “meaningful argument for the distinctive significance of
 any claim limitation” not found in claim 1, the district court
 did not err in finding that British Telecom had forfeited its
 ability to argue that other claims are separately patent el-
 igible. Berkheimer v. HP Inc., 881 F.3d 1360, 1365
 (Fed. Cir. 2018).
                               III
     For the foregoing reasons, we affirm the district court’s
 judgment.
                         AFFIRMED
