Claims to Managing Electronic Messages Held to be Not Patent-Eligible

A court was easily able to analogize claims of two patents directed to electronic messaging to manual communications processes; the court consequently granted a motion for summary judgment of invalidity under 35 U.S.C. § 101.  Mobile Telecommunications Technologies LLC v. Blackberry Corp., No. 3:12-cv-1652-M (N.D. Texas May 12, 2016).

Independent claims 1 and 8 of U.S. Patent No. 5,809,428 recite “[a] network operations center for transmitting and receiving messages to and from a wireless mobile unit” and, “[i]n a two-way wireless communications system, a method of processing data messages that cannot be successfully transmitted from a network operations center to a wireless mobile unit.”  Blackberry persuasively analogized the claims to a “hypothetical [that] imagines a courier attempting to deliver a package.”  The claims, the court determined, “are directed to the basic idea of sending and storing messages, which is not rooted in computer technology.”

Similarly, independent claim 1 of U.S. Patent No. 5,894,506 recites “[a] method of communicating messages between subscribers to an electronic messaging network.”  In particular, the ’506 patent claimed encoding messages.  Not only did Blackberry provide a hypothetical showing how the claimed method had been used for a long time, e.g., for battlefield communications, but in another case the inventor had testified that the claimed method was analogous to stenography.

With respect to the second prong of the Alice/Mayo test, none of the claims recited an inventive concept beyond the abstract idea, and the claims would have preempted all uses of the recited steps.  Lack of prior art making the claims non-novel and non-obvious did not change the court’s analysis: simply being “the first to successfully implement the concepts of the asserted claims within the context of a two-way wireless messaging service that utilizes a NOC does not transform the abstract ideas into something patentable.”  Further, DDR Holdings, LLC v. Hotels.com, L.L.P. was inapplicable.  The “claims do not solve problems specifically arising in the realm of computer networks,” and “do not specify how interactions with the two-way wire-less network are manipulated to yield a desired result.”

Note that this case was decided the same day as the Federal Circuit’s decision in Enfish, LLC v. Microsoft Corp. (Fed. Cir. May 12, 2016), which held software claims patent-eligible.  However, I doubt Enfish would have changed the result here.  The present case more likely would fall under the rubric of the Federal Circuit’s decision a week later in TLI Communications LLC v. AV Automotive LLC (Fed. Cir. May 17, 2016), in which claims to administering digital images were held not patent-eligible under Section 101.  And this case seems consistent with the takeaway from those two recent Federal Circuit cases, which is that claims having a technical effect may survive Alice, whereas claims lacking a “technical effect” will not.

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