How much detail does patent claim language require to describe a technical solution to a technical problem to meet the patent-eligibility requirements of the Alice/Mayo test and 35 U.S.C. § 101? At the very least, enough to tailor the claims to the technical environment beyond generic components. In Mantis Communications v. Baskin-Robbins Franchising LLC, No. 2:17-CV-00328 (E.D. Tex. Sep. 15, 2017), the an Eastern District of Texas magistrate judge recommended granting a motion to dismiss because a system for directing text messages over communications networks with sales offers is not patent-eligible under Section 101.
Plaintiff owns patents related to a “message application server” that communicates with different wireless carriers to send messages to mobile device owners, the messages including offers for sale for products from various companies. Defendant moved to dismiss the patent infringement lawsuit, arguing that the claims of the asserted patents are ineligible under Section 101. Plaintiff argued that the claims satisfied Section 101 because the claims were directed to a technical problem in mobile device technology, the problem of linking mobile devices to a mass communication server across different wireless carriers.
Following the two-step Alice test, the court rejected this argument, holding that the claims were directed to the abstract idea of mass promotion of marketing and business information. The Court noted that the “nexus between the claims and the purported problem is not tailored enough to take the claims away from the abstract idea,” and that the “broad, almost functional term” used in the claim did not include specific components other than well-known devices. Furthermore, the Court noted that a narrow concrete implementation was present in two unasserted patents in the same patent family.
Regarding the second step of the Alice test, the Court held that the “message application server,” which the Plaintiff argued was inventive, was described in the specification as “any computing server designed to process messages,” and thus too broad to make the abstract idea patent-eligible. Notably, the Court refused to “import limitations from the specification to narrow the construction of such [claim] terms….”
Lessons for Practice
Directing claims to a technical environment presents a challenge in patent drafting and claim construction, particularly if the claims asserted were drafted before Alice. Plaintiff lost because the claim language was insufficiently tailored to the technical environment, and the use of broadening language in the specification hurt interpretation before the Court. Using specific definitions for terms (even terms of art), described in the specification and even the claim, can tailor the claim language to the technical environment of the patent. Furthermore, describe crucial technical elements in technical terms, avoiding generic uses and definitions.