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September, 11th, 2017
By Stephen Ball
At issue was a Motion for Summary Judgment that certain claims of U.S. Patent Nos. 5,960,032 (the “‘032 patent”) and RE41,490 (the “‘490 patent”) are patent-ineligible under 35 U.S.C. § 101. Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al, 1-13-cv-01632 (DED August 23, 2017, Order) (Stark, USDJ). The court began its analysis with a quote from an 1852 Supreme Court case noting that “[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” In re Comiskey, 554 F.3d 967, 977-78 (Fed. Cir. 2009) (quoting Le Roy v. Tatham, 55 U.S. 156, 175 (1852)).
The court then analyzed the recent test set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). With respect to Alice step 1, the court noted that the Federal Circuit has distinguished improvements to computer functionality from abstract ideas. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). However, it also noted that claims can still be abstract where their focus is not on “an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). The court noted that a patent specification’s disparagement of prior art or “conventional” implementations may bolster a conclusion that claims are directed to a non-abstract improvement of technology rather than an abstract idea. Id. at 1339.
With respect to Alice step 2, the court noted Federal Circuit precedent where “the limitations of the claims, taken individually, recite generic computer, network and Internet components, none of which is inventive by itself.” Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). Despite this, the Federal Circuit determined that an ordered combination of such limitations was adequately alleged to be patent eligible, at least at the pleading stage. Id.
Given this somewhat untethered and evolving framework, the court then began to analyze the claims. Claim 1 of the ‘032 patent is as follows:
A method for transmitting digital data in a wireless communication environment comprising: dividing an incoming stream of serial data bits having a first bit duration (Tb) into a plurality (K) of parallel data bit streams; expanding by K times the bit duration of the incoming data so that the resulting symbol duration in said parallel data streams equals Ktb; modulating said expanded parallel data streams with modulating sequences, each said modulating sequence having a processing gain N, having a sequence period equal to the symbol duration KTb of said expanded data streams, and having N binary chips within each period so that each chip has a chip duration of Tc =KTb /N, wherein K and N are integers and N>K; and summing the modulated parallel data streams for transmission.
In its analysis, the court agreed with arguments made by the patent owner, stating that claim 1 is directed to improving the transmission of data in a wireless communication system, while avoiding transmission problems such as fading. Importantly, it relied on portions of the specification that confirmed this concept as the “essence” and objective of the invention. The court then concluded that instead of simply reciting an abstract idea of a mathematical relationship, claim 1 employs that relationship to aid in solving prior art problems, thus satisfying the test for patent eligibility.
The court then considered claim 17 of the ‘490 patent:
A method of transmitting a multimedia message, comprising:
receiving a multimedia message from a first mobile station at a multimedia message server associated with a mobile operator, wherein the received multimedia message is destined for a second mobile station;
obtaining address information associated with the second mobile station, based upon the received multimedia message;
generating an e-mail message based upon the received multimedia message if the second mobile station is not associated with the mobile operator, wherein the e-mail message is formatted to be transformable back into the received multimedia message; and
transmitting the e-mail message to a server from a network interface.
The court found this claim is directed to mere data conversion using a common format, which the Federal Circuit in the past has found patent ineligible. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (“This method reflects standard encoding and decoding, an abstract concept long utilized to transmit information.”).
Having found this claim failed step 1, the court moved to its step 2 analysis. Here, the court found that “claim 17 fails to provide an inventive concept.” The court again relied on the specification, which states that multimedia message servers are conventional and that “the invention utilizes existing, well-known, and widely-available e-mail practices.” In fact, the patent owner’s own expert confirmed that at the time of the invention e-mail was capable of transmitting messages that contained multiple media components. Thus, the court concluded that claim 17 is directed to solving an old problem and does so by merely reformatting, which “does not solve a problem arising in the realm of computer networks and is not an inventive concept.”
Finally, the court noted claim 17 does not impose meaningful limits on claim scope. Specifically, it concluded that it “merely claim[s] a software implementation of a purely mental process [(e.g., translation)] that could otherwise be performed without the use of a computer.” CyberSource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).
It is interesting to note that claim 17 of the ‘490 patent appears to list a number of structural features (mobile stations, message server, messages, network interface) whereas claim 1 of ‘032 patent does not. Despite this, the court found claim 17 is not patent eligible while it found claim 1 patent eligible.
Important to the analysis was the court’s use of the respective patent specifications. When drafting a patent application, use the specification as an opportunity to tell the story of the invention. Put the claimed invention in context—what is missing in the prior art and how does the invention address prior art problems in a new way. This was a valuable component to the court’s analysis of claim 1. At the same time, try to avoid over-simplifying or otherwise admitting that the invention can be carried out by conventional, well-known means. This was fatal to the analysis of claim 17.
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