The Southern District of Florida recently granted a motion to dismiss in favor of Minted LLC, and a motion for judgment on the pleadings in favor of ShoppersChoice.com LLC based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test. At issue wasclaim 11 of U.S. Patent No. 9,373,261, directed to a system for automating notification of delivery or pickup of a good or service. Electronic Communication Technologies, LLC v. Minted, LLC, No. 16-81669-CIV (S.D. Fla. Jan. 18, 2019); Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC, No. 16-81677-CIV (S.D. Fla. Jan. 18, 2019). Claim 11 of the ‘261 patent was ineligible because the claim was directed toward the abstract idea of “providing advance notification of the pickup or delivery of a mobile thing,” and the claim recites “purely generic and conventional computer equipment” that operates in a “routine and conventional” manner.
Claim 11 is reproduced here:
11. An automated notification system, comprising:
one or more transceivers designed to communicate data;
one or more memories;
one or more processors; and
computer program code stored in the one or more memories and executed by the
one or more processors, the computer program code comprising:
code that enables a first party associated with a personal communication device (PCD) to input or select authentication information for use in connection with a subsequent notification communication session involving advance notice of a delivery or pickup of a good or service at a stop location by a mobile thing (MT);
code that causes storage of the authentication information;
code that monitors location or travel information in connection with the MT;
code that causes initiation of the notification communication session to the PCD with the one or more transceivers, in advance of arrival of the MT at the stop location, based at least in part upon the location or travel information associated with the MT;
code that, during the notification communication session, provides the authentication information to the PCD that indicates to the first party that the notification communication session was initiated by an authorized source; and
code that, during the notification communication session, enables the first party to select whether or not to engage in a communication session with a second party having access to particulars of the pickup or delivery.
The court applied the two-step Alice framework to Minted’s 12(b)(6) motion to dismiss and to ShoppersChoice.com’s motion for judgment on the pleadings. Citing Mobile Telecommunications Techs., LLC v. United Parcel Serv., Inc., 173 F. Supp.
3d 1324, 1331 (N.D. Ga. 2016), aff’d, 708 F. App’x 684 (Fed. Cir. 2018), the court noted that delivery notification practices “have existed for at least several decades[, and]…is therefore the kind of conventional business practice long ‘prevalent in our system of commerce’ that Alice Corp. found unpatentable.” Despite additional features beyond just tracking an item, such as authentication of information and optional communication with a representative, the court found that, like Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014),“the concept of the embodied invention is only the abstract idea of notifying a party of the travel status of a good or service.” Electronic Communication Technologies argued that claim 11 is directed toward a technological improvement, like the claims in Vehicle IP, LLC v. AT&T Mobility LLC, No. CV 09-1007-LPS (D. Del. Sept. 29, 2016). However, the court found that claim 11 “does not propose a specific organization of components, much less how that arrangement improves upon existing methods.” Therefore, the court, citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), found that claim 11 was directed toward an abstract idea because “the general-purpose computer components [of claim 11] are added post-hoc to a fundamental economic practice.”
Moreover, under Alice step two, Claim 11 “recites generic computer components that can be configured to perform purely conventional computer functions.” The court found that Claim 11 of the ‘261 patent “does not contain any limitation that requires components of the system to operate in an unconventional manner.” Instead, the “specification makes clear that the components and processes are well-known and that the components are not arranged in any specific or limiting way.” Citing Mobile Telecommunications Techs, the court determined that “[a] patent directed to the abstract idea of providing delivery notification that can be implemented with general computer components does not contain an ‘inventive concept.’” Therefore, the court found claim 11 failed the Alice framework and was drawn toward ineligible subject matter.
Lessons for Practice
As set forth in Secure Cam, LLC v. Tend Insights, Inc., generic structure is not enough to establish patent-eligibility. This case illustrates that additional features that “add a degree of particularity” will not be sufficient to overcome the pitfalls of generic components operating in a conventional manner to perform an abstract idea. To be patent eligible, software claims need to be directed toward functional improvements to the computer and include specific structure that provides the functional improvement. In other words, to satisfy the requirements of § 101, software claims should include specific structure that causes the computer to operate in an unconventional way.