The Eastern District of Texas recently denied a Rule 12(b)(6) motion to dismiss based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test, in claims of U.S. Patent Nos. 9,154,734; 9,253,444; and 9,419,939 each directed to a videoconferencing system using an Internet Protocol (IP). Teleconference Systems LLC, v. Metaswitch Networks Corp., No. 18-CV-234-JDK (E.D. Tex. Feb. 5, 2019).The claims of the ‘734 patent were eligible because the claims were not directed toward an abstract idea, but rather were directed toward “a specific device – an allegedly improved videoconferencing services switch – not merely the idea of video conferencing itself.” Additionally, the claims “described a new videoconferencing services switch comprised of several modules and a policy engine to improve on the…videoconferencing technology.”
Teleconference did not dispute Metaswitch Networks’ assertion that claim 11 of the ‘734 patent is representative for each patent. Claim 11 is reproduced here:
A videoconferencing services switch adapted for deployment in a service provider Internet Protocol (IP) network and capable of processing a videoconferencing call between an origination terminal and a destination terminal, the origination and destination terminals being located on one or more subscriber IP networks, the videoconferencing services switch comprising:
a call control module capable of performing call set-up and tear-down operations and managing call data streams for the videoconferencing call;
a quality service module capable of being configured to guarantee quality of service for the videoconferencing call placed via the switch according to the subscriber-specific settings;
a security module configured to provide firewall services for the videoconferencing call, the security module further comprising a Session Initiation Protocol (SIP) firewall module configured to use firewall settings on a per-subscriber basis to allow a subscriber-specific firewall that is custom-implemented for traffic from each subscriber;
a tunneling services module configured to provide a virtual private network (VPN) between the videoconferencing services switch and a subscriber IP network; and
a policy engine capable of being configured to enforce policies on the videoconferencing call based on subscriber-specific or user-specific settings.
The court applied the two-step Alice framework to Metaswitch Networks’ Rule 12(b)(6) motion to dismiss. The court found that representative claim 11 was “not directed to an abstract idea” because claim 11 claims “a specific videoconferencing services switch for use in an IP network.” Metaswitch Networks’ argued that the representative claim was directed to videoconferencing, which “is ‘an abstraction-an idea, having no particular concrete or tangible form,’” similar to the claims in Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015), and Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App’x 914, 917 (Fed. Cir. 2015). However, the court noted that the claims in Internet Patents Corp. were ineligible “because the patent claimed well-understood, routine, and conventional activities; included no restrictions on how the desired result was accomplished; and did not describe the mechanism for the desired result.” Similarly, the court noted that the claims in Vehicle Intelligence and Safety LLC were ineligible because “the claims were not limited and did not explain how the claimed invention performed its functions.” In the present case, the court found that representative claim 11 “is not directed to videoconferencing generally,” and “the ‘focus of the claims is on [a] specific asserted improvement’ in the capabilities of videoconferencing services switches.” Therefore, the court found that representative claim 11 of the ‘734 patent was patent eligible because the claim was not directed to an abstract idea.
The court went on to analyze step two of Alice,and, citing Trading Techs. Int’l Inc. v. CQG, Inc., 675 F. App’x. 1001, 1004–05 (Fed. Cir. 2017),the court noted “specific technologic modifications to solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter.” Representative claim 11 claims “a specific videoconferencing services switch designed to address problems with prior ISDN videoconferencing systems and to address ‘a number of fundamental problems’ for videoconferencing over IP networks.” The court found the patent is “directed to a technical solution to a technical problem.” Therefore, the court found representative claim 11 satisfied the Alice framework and was patent eligible subject matter.
Lessons for Practice
Including structure in the claims and specification of software applications can be helpful in establishing patent eligible subject matter. However, as set forth in Secure Cam v. Tend Insights, the mere inclusion of physical structure will not satisfy patent eligibility requirements. Instead, as this case illustrates, system claims should be directed toward specific structure and the specification should disclose the improvements associated with the specific structure to establish patent eligibility under § 101.