The Eastern District of Texas recently granted a motion to dismiss based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test, in U.S. Patent No. 6,014,089 directed to methods of transmitting data to a remote device using a personal communications system. First-Class Monitoring, LLC, v. United Parcel Service of America, Inc., No. 19-CV00106-WCB (E.D. Tex. Jul. 22, 2019). The ‘089 patent was ineligible because “the claims are not based on an improvement in computer or communications technology.” In particular, “‘the invention made no technological changes to the short message system, but merely used that system for transmitting particular data requests and responses to those requests.”
Claim 1 and Claim 7 were analyzed by the court and differ from each other in that Claim 7 “recites the automatic collection of data at the data collection unit, as compared with data collection initiated by a data request.” Claim 7 is reproduced here:
A method for transmitting a data sequence via a personal communications system transmission protocol comprising the steps of:
automatically collecting data at a data collection unit;
composing at least one data packet including said collected data, said at least one data packet including said collected data being in a form which conforms to conventional short message data packets;
inserting said at least one data packet including said collected data in a short message service portion of a control channel of the personal communications system transmission protocol as one or more short messages; and
transmitting said at least one data packet including said collected data to an access point via said short message service portion of the control channel of the personal communications system transmission protocol as one or more short messages.
The court applied the two-step Alice framework to UPS’ Rule 12(b)(6) motion to dismiss. The court found that claims 1 and 7 were directed to an abstract idea because the claims “are not directed to a technological solution to a technological problem, but merely look to the use of known technology to communicate information of a type that, according to FCM, has not previously been transmitted using that technology.” FCM argued that the claims “‘describe an approach to accomplish a specific, practical, and useful improvement to the existing processes…that increases the efficiency of the system and reduces traffic on the SMS control channel.’” However, the court noted that “the specification makes clear that the technology on which the claims rely is conventional and well known.” The court found that, similar to the process in Electric Power Group, LLC v. Alstom S.A., No. 2015-1778 (Fed. Cir. Aug. 1, 2016), “[t]he process of requesting, collecting, analyzing, and transmitting information, without more, is directed to an abstract idea.” In the present case, the court further found that the risk of preemption was significant because Claim 1 “reaches any method of requesting and receiving information that uses the [known] short message service protocol” and Claim 7 “covers any method of automatically collecting data and transmitting that data using the [known] short message service protocol.” Therefore, the court found that the ‘089 patent was directed to abstract ideas.
The court went on to analyze step two of Alice. The court found that “claims 1 and 7 amount to nothing more than conventional communications system components operating according to their ordinary function.” In citing In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016), the court noted that “the steps of receiving, interpreting, and composing data “‘fall squarely within precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea.’” Further, like Bridge & Post, Inc. v. Verizon Commc’ns, Inc., No. 2018-1697 (Fed. Cir. July 5, 2019), claiming “the transmission of a different type of data by a recognized mode of data transmission [is] insufficient to constitute an inventive concept.” Therefore, the court found the ‘089 patent does not satisfy the Alice framework and is patent ineligible subject matter.
Lessons for Practice
Patent eligibility and novelty are separate issues and a finding of novelty “does not answer the question whether the claims are directed to an inventive concept.” As this case illustrates, “the use of conventional information transmission technology that differs from the prior art only in that it is being used to transmit different information is not patentable subject matter.” In addition to being novel over the prior art, the claims and specification should be directed toward technological solutions to technological problems in order to establish patent eligibility under § 101.