Patent Claims Directed to Providing an Intermediary Server in a Computer Network Survive Alice Scrutiny

For an example of a patent claim that survived a district court’s application of the Alice/Mayo patent-eligibility test, see independent claim 24 of US Patent No. 6,928,479. 01 Communique Laboratory, Inc. v. Citrix Systems, Inc., No. 1:06-cv-253 (N.D. Ohio Dec. 21, 2015.)  In this case, the court denied the defendant's motion for summary judgment of invalidity of asserted claims of the ’479 patent under 35 U.S.C. § 101 (and granted the plaintiff's motion for summary judgment of Section 101 validity).

The ’479 patent was directed to a “second computer [that] facilitates communication between the first computer and a third computer by authenticating the third computer for communication with the first computer and providing the location of the first computer for communication with the third computer.” Claim 24 recites:

A computer program product for use on a server computer linked to the Internet and having a static IP address, for providing access to a personal computer from a remote computer, the personal computer being linked to the Internet, its location on the Internet being defined by either (i) a dynamic public IP address (publicly addressable), or (ii) a dynamic LAN IP address (publicly un-addressable), the computer program product comprising:

(a) a computer usable medium;

(b) computer readable program code recorded or storable in the computer useable medium, the computer readable program code defining a server computer program on the server computer wherein:

(i) the server computer program is operable to enable a connection between the remote computer and the server computer; and

(ii) the server computer program includes a location facility and is responsive to a request from the remote computer to communicate with the personal computer to act as an intermediary between the personal computer and the remote computer by creating one or more communication sessions there between, said one or more communication sessions being created by the location facility, in response to receipt of the request for communication with the personal computer from the remote computer, by determining a then current location of the personal computer and creating a communication channel between the remote computer and the personal computer, the location facility being operable to create such communication channel whether the personal computer is linked to the Internet directly (with a publicly addressable) dynamic IP address or indirectly via an Internet gateway/proxy (with % publicly un-addressable dynamic LAN IP address).

The defendant alleged that claim 24 was drawn to the abstract idea of

an intermediary that, in response to a request for communication, finds a current location of the requested endpoint and creates a connection between the two devices, and argues that the invention could be, and was, performed by humans when telephone operators connected one caller to a second caller at the first caller’s request.

The court disagreed, stating that the defendant’s analogy broke down “when the claim is considered as a whole, as Alice requires.” The claim did not require simply using IP addresses, analogous to telephone numbers, but included additional recitations, e.g., “creating the private communication channel for remote access is not simply to allow people to talk with each other, but to allow direct access of data on the personal computer from the remote computer.”

Further, examining the second prong of the Alice/Mayo test, the court found that “[e]xamined as a whole, the specific features, steps, and limitations of claim 24 provide a specific solution to remote access problems that is necessarily rooted in computer technology, and thus constitute an inventive concept.” Moreover, the claims provide a “particular solution to computer remote access problems” and “do not foreclose or preempt other solutions to problems concerning remote access technology.”

Other district courts may have answered the patent-eligibility question in this case differently. It may also be relevant that the issue was presented at the summary judgment stage, when the parties and the court had already invested significantly in the litigation, as opposed to earlier in the litigation. Nonetheless, this case provides an example of a claim and arguments that that succeeded in passing the patent-eligibility bar under Alice.