Patent claims directed to a “payload delivery system” for delivering payloads, i.e., data, “via one or more communication networks” have been held invalid under 35 U.S.C. § 101. Novo Transforma Tech., LLC v. Sprint Spectrum, L.P., Civil Action No. 14-616-RGA (D. Del. Sept. 2, 2015). As with many recent Section 101 cases, the court granted a defense motion brought under Fed.R.Civ.P. 12(c) for judgment on the pleadings.
Claims of U.S. Patent No. 5,826,034 were held to be directed to an unpatentable abstract idea. The court took independent claim 23 of the ‘034 patent as representative of the asserted claims:
23. A payload delivery method for providing guaranteed end-to-end delivery of a payload from a sender to a recipient, said payload being delivered via one or more communication networks, comprising the steps of:
generating a payload in a first media;
defining payload delivery parameters by said sender;
converting said payload to an alternative media at different locations as necessary for completion of delivery of said payload; and
automatically [notifying] said sender upon receipt of said payload by said recipient.
The court began by stating the familiar two-part Alice/Mayo test: (1) are the claims drawn to a patent-ineligible (e.g., abstract) idea, and (2) if so, do the claims recite enough to be “significantly more” that the ineligible concept?
Here, the court found that “the claims of the ‘034 patent are directed to the abstract idea of “translation.” The plaintiff, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), argued that the claims were “necessarily rooted in technology” because “the claimed invention solves the problem of incompatibilities between different electronic communication formats.” Unfortunately for the patent owner, “[t]he ‘034 patent does not even require “payloads” to be electronic communications.” For example, payloads could be sent via the United States Postal Service, and could be delivered manually. Thus, “the claims solve a problem common to all types of communication, including standard mail.” Simply “[p]erforming the translation function over the Internet is not an inventive concept.”
The court here was clearly struck that the claims encompassed manual systems and processes. Therefore, this case emphasizes the importance of limiting one’s specification to electronic systems, and drafting in manner to not only explicitly, but implicitly, exclude any manual system from falling within the ambit of the claims. For defendants in patent litigation, this case emphasizes that finding any manually-practiced embodiment may be enough to support a finding of patent-ineligibility.