For all the uncertainty engendered by Mayo v. Prometheus and Alice Corp. v. CLS Bank and their lower court progeny, many patent claims on their face simply will not be found patent-eligible under 35 U.S.C. § 101 after Alice and Mayo. Two patents illustrative of this proposition recently met their fate on motions for summary judgment, one directed to managing real estate listings, and another to telephone directory lookups. Listingbook, LLC v. Market Leader, Inc., 1-13-cv-00583 (M.D. N.C. Nov. 13, 2015); Stanacard, LLC v. Rubard, LLC, No. 1-12-cv-05176 (NYSD Nov. 18, 2015).
U.S. Patent No. 7,454,355, at issue in the Listingbook case, was entitled “Method and system for providing real estate information using a computer network, such as the internet.” If that title wasn’t enough, independent claim 1, though really long, gave the game away in the preamble:
A computer-implemented method of providing client-accessed real estate information to a real estate professional associated with a first client and a second client, and for providing professional-accessed real estate information to the first client and the second client.
After a long detour into the standards and burdens of proof in a patent-eligibility determination, it was not difficult for the court to conclude that the claim was directed to an abstract idea:
Claim 1 discloses a method of providing a real estate agent and two clients with access to a database of real estate information, monitoring the actions of the agent and clients as they access that information, generating and storing the information they access, and providing some client-accessed information to the agent and some agent-accessed information to the clients, so that each has “knowledge of the actions” of the other. At its core, this method embodies the ideas of information exchange (sharing) and collaboration.
The recitation of a generic computers did not provide an inventive concept sufficient to overcome the abstract idea. The claims of the ’355 patent were unpatentable under Section 101.
U.S. Patent No. 7,346,156, at issue in the Stanacard case, was entitled “Methods and apparatuses for placing a telephone call.” The claims lacked damning preambles, and the field of the invention was disclosed to encompass “placing a telephone call and, more particularly, to placing a telephone call that is forwarded to another location.” Thus, the ’156 patent sounds vaguely technical, and might at first blush seem to present greater difficulty. But not when you read the claims.
Claim 1 of the ’156 patent recites:
A method comprising:
detecting an identity of a caller;
receiving an assigned incoming telephone number;
identifying a recipient associated with the assigned incoming telephone number and the identity; and
connecting the caller and the recipient,
wherein said caller has a plurality of assigned incoming telephone numbers to choose from, at least one of said plurality of assigned incoming telephone numbers being associated with said recipient,
wherein each assigned incoming telephone number is associated with multiple recipient telephone numbers, a particular telephone number of a recipient being determined solely by a particular assigned incoming telephone number used by a particular identified caller and without input of further data by said caller, whereby said caller is not required to be within a particular network for making calls.
The court agreed that “that Stanacard's idea for routing long distances calls is at the very least clever; and there is a genuine issue of fact about whether it is or is not "obvious" within the meaning of the patent laws, 35 U.S.C. § 103.” Nonetheless, asked the court, “is it patentable?”
Not on your life, answered the court. The claims here recited a method of placing a phone call that the judge recalled seeing on Lassie as a child; the claims were “directed to an abstract idea of connecting two people via long distance telephony through the medium of using caller ID and call forwarding when a local number is dialed, rather than to a ‘process,’ ‘machine’ ‘manufacture’ or ‘composition of matter.’” The claims recited no inventive concept because the claims did not recite any “technological or technical Improvement” but instead relied on well-known mechanisms for caller ID and call forwarding.