Facebook loses Section 101 appeal related to sponsoring content in news feeds based on the users' connections.

A recent decision by the PTAB in an ex parte appeal by Facebook gives some insight as to how social networking inventions will fare in the current Alice climate. The answer - not well.

The invention relates to a typical social networking patent application where the degree of closeness between users is used to identify other users to receive promoted content in a news feed. Claim 1 on appeal is reproduced below:


The appeal brief was filed in late 2015 - a time when it was clear that Alice rejections could spell big trouble for such applications. Despite this, the appeal brief presents a somewhat lackluster argument for patentability, where all of the claims are argued together. Experience has shown that winning a Section 101 appeal at the PTAB essentially requires winning on step 1 of the test and convincing the Board that the invention is not directed to an abstract idea. Here, Facebook presents a single paragraph argument as follows:


What is missing here is any explanation of any technological problems solved by the claimed invention. It seems probable that there are technical problems to be solved in developing a social networking platform that is able to have advanced promotion of content in a way that minimizes processing power, reduces networking traffic, reduces data transfer requirements, etc. Some of these aspects even seem to be present in claim 1, including the specifics of using an affinity score as a representation of closeness between users, and delivering the promotion only to the subset of users until viewed a predetermined number of times. Given the arguments actually made in the brief, it was not difficult for the PTAB to side with the Examiner:


So, when prosecuting an application focused on social media platforms, such as this case, it is important to focus on technological issues solved by the claimed invention. On appeal, such arguments are more and more important to obtaining a successful outcome. The deck is already stacked against the applicant in Section 101 Alice appeals, and the arguments need to be on point to convince the PTAB Board members of eligibility.