Intellectual Ventures' Network Management and SMS Messaging Patents Invalidated under Alice

Claims of patents directed to network account management and messaging functionality recite patent-ineligible abstract ideas under the Mayo/Alice test, says Delaware’s Judge Stark. Intellectual Ventures I LLC v. AT&T Mobility LLC (D. Del., Dec. 30, 2016). Accordingly, Judge Stark granted Defendants’ Rule 12(c) Motion for Judgment on the Pleadings, holding claims of US Patent Nos. 6,115,737, 8,078,200, and 7,450,957 patent-ineligible under 35 U.S.C. § 101.

Perhaps of most interest in Judge Stark’s opinion are three paragraphs discussing (a) the appropriateness of using a previously-issued claim construction order in the present motion, and (b) whether the motion was ripe for decision. The plaintiffs argued that use of the claim construction decision was improper because it was outside the pleadings, and “at least partly based on factual determinations.” To the contrary, because claim construction “is a matter of law,” Judge Stark explained that “the Court may take notice of and rely on its claim construction opinion without converting Defendants’ Motion into a motion for summary judgment.”

Further, the motion, brought over a year and half ago, was ripe for decision. Plaintiffs had evidently argued among other things that the court should “wait until the case law was more settled,” but since that time the Federal Circuit had “issued at least 25 presidential opinions addressing Section 101 issues.” And there were “no disputes of material fact that bear on the Court’s § 101 analysis."

Claim 7 of the ’737 patent recites “[a] method for customer access to and manipulation of services and data of a service provider.”  The recited method steps include a user accessing a network and making a request, and then processing the request for various network services. Judge Stark agreed with Defendants that “claim 7 is directed to the abstract idea of account management.” Turning to Mayo/Alice step 2, the recitation of a specific hardware element, “a customer contact services note Internet Gateway (CCSN/IG)” was not enough to overcome the unpatentable abstract idea. Claim 14 of the ’737 patent included different steps, but was directed to the same abstract idea.

The claims of the ’200 and ’957 patents, based on a common specification, were directed to short message service (SMS) messaging. Claim 1 of the ’200 patent recites receiving and then determining whether to block transmission of an SMS message. The court held this claim to be directed to the abstract idea of screening messages. The claim recited no subject matter to make the abstract idea patent-eligible because the claim recited no technological improvement. Claim 1 of the ’957 patent recited “two rounds of screening,” but the court explained that “two levels of screening do not transform the underlying abstract idea into something patent-eligible under § 101.”

Lessons for Practice

The patent claims at issue in this case were very broad, and it is not surprising to see them invalidated under Section 101. Uncertainty remains in Section 101 law, but that uncertainty is diminishing, at least a little. While I do not feel comfortable in asserting that any district judge would have invalidated the patent claims at issue here, one can certainly take this case as exemplifying the present truth that reciting hardware or a “technical environment” in a patent claim will not save the claim. Broad patent claims without a clear technological innovation are unlikely to survive patent-eligibility attacks in district courts.

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