Various claims of two patents covering telephone call processing were found to be directed to respective patent-ineligible abstract ideas: “sequentially dialing a list of telephone numbers to overcome a busy signal,” and retrieving stored data from a “database in response to the initiation of a phone call, and inserting at least a portion of that data in the already-existing callerID field.” Because the claims did not recite a significant additional “inventive concept,” the court granted a motion for judgment on the pleadings based on patent-ineligibility under 35 USC § 101 and the Alice/Mayo test in BroadSoft, Inc. v. CallWave Communications, LLC, No. 13-711-RGA (D. Del. Oct. 1, 2017).
There were two categories of claims at issue in the patents-in-suit (US 8,351,591 and US 7,822,188): the “sequential dialing claims” and the “single number outcall claims.”
Independent claim 40 of the ’188 patent was a sequential dialing claim. The court characterized this claim as
directed to organizing human activity: accessing stored information when prompted by a user’s incoming call, and executing an automated response according to stored instructions provided in advance by a subscriber.
Further, dependent claim 41 provided the further limitation of specifying “parameters for the ‘Internet protocol proxy.’” But this limitation did not change the fundamental subject matter; at root, the claimed call processing system was simply provided for “connecting a caller with a called party by dialing multiple numbers for the called party if necessary.” Thus, the sequential dialing claims were directed to the foregoing abstract idea.
The court then turned to the question of whether the claims included an inventive concept to overcome the patent-ineligible abstract idea. But the claims, as described in the ’188 patent, used “elements of the call processing system” that it characterized “as ‘standard.’” Further, although the claims recited certain rules, this case was not like McRO, Inc. v. Bandai Namco Games America Inc., where rules were implemented to improve “automated facial animation.” In contrast, “the genus of rules recited here does not represent an improvement to telephony technology.” Moreover, claim 41 did not recite an inventive concept with its recitation of a “hybrid network,” because it is only description of the functionality recited was that it “takes place without describing how this process is accomplished.”
Turning to the “single number outcall claims,” represented by claim 1 of the ’591 patent, the court agreed that the claims recited mere storage of information, “telephone addresses,” and the subsequent transmission of the telephone addresses into a callerID field. This was allegedly a long practiced concept “because a call involving an assistant located in an office who connects an employee working from home with a third party would display a number for the office, rather than the employee’s home phone number, in the callerID field.”
Finding the claims directed to an abstract idea, the court again rejected comparison to the patent-eligible rules of McRO. Although technological components, i.e., “conventional telephony components,” were deployed in the claims solution, “the problem of being unable to reach a particular individual is a practical, human unavailability problem, not a technological one.” There was no inventive concept because the claims “merely employee known hardware components and limit conventional steps to the computer telephony environment.”
The court also granted a motion for summary judgment that certain claims were invalid as anticipated, but refused to grant an “obviousness challenge.”
Lessons for Practice
This is yet another Section 101 case in which a technical environment was not enough to save the claims. Once again, we can see the importance of describing not just a technical solution, but a technical problem that is solved by that technical solution. And then, of course, tying claims to the described technical problem and solution is crucial.