Claims of four patents directed to routing VoIP calls fail the two-part Mayo/Alice patent-eligibility test, said the court in Voip-Pal.com, Inc. v. Apple, Inc., Case No. 18-CV-06216-LHK, (N.D. Cal. Nov. 1, 2019) (Judge Lucy Koh), granting the defendants’ Rule 12(b)(6) motion to dismiss. Under part one of the Alice test, all of the claims at issue were directed to the abstract “idea of routing a communication based on characteristics of the participants.” Under part two of the Alice test, the claims recited only generic computing technology operating in an expected manner, and hence no inventive concept. This is a case in which a large number of relatively lengthy claims that on their face appear laden with technical detail were invalidated. It will be interesting to watch this case in the doubtless inevitable appeal to the Federal Circuit.
The patents-in-suit were U.S. Patent Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549, all entitled “Producing Routing Messages for Voice over IP Communications.” The court identified a number of representative claims from each of the four patents, but focused on claim 1 of the ’002 patent, reproduced below in its voluminous entirety:
1. A method of routing a communication in a communication system between an Internet-connected first participant device associated with a first participant and a second participant device associated with a second participant, the method comprising:
in response to initiation of the communication by the first participant device, receiving, by a controller comprising at least one processor, over an Internet protocol (IP) network a first participant identifier and a second participant identifier, the second participant identifier being associated with the second participant device;
causing the at least one processor to access a database comprising user profiles, using the first participant identifier, each user profile associating a respective plurality of attributes with a respective user, to locate a plurality of first participant attributes;
processing the second participant identifier, using the at least one processor, based on at least one of the plurality of first participant attributes obtained from a user profile for the first participant, to produce a new second participant identifier;
classifying the communication, based on the new second participant identifier, as a system communication or an external network communication, using the at least one processor;
when the communication is classified as a system communication, producing a system routing message identifying an Internet address associated with the second participant device, using the at least one processor, wherein the system routing message causes the communication to be established to the second participant device; and
when the communication is classified as an external network communication, producing an external network routing message identifying an Internet address associated with a gateway to an external network, using the at least one processor, wherein the external network routing message causes the communication to the second participant device to be established using the gateway to the external network.
The court spent a lot of time explaining how ’002 patent claim 1 was overlapping with and/or representative of other claims. I will not distill that analysis here other than to note what is probably -forgive the word – obvious. To wit: that the court could reduce one claim as being representative of much if not all of the claimed subject matters across claims of four patents more than foreshadows the conclusion that all claims are directed to an unpatentable abstract idea.
Claim 1 of the ’002 patent could be reduced to the abstract “idea of routing a communication based on characteristics of the participants, which the claim presented
in five steps: (1) receiving identifiers associated with the first and second participants when a communication is initiated, (2) searching a database using the first participant identifier and locating a collection of attributes associated with the first participant, (3) processing the second participant identifier using at least one first participant attribute to produce a new second participant identifier, (4) classifying the communication as a “system communication” or an “external network communication” “based on” the new second participant identifier, and (5) producing a “routing message” that causes the communication to be established either within the system or through a gateway to an external network.
The court discussed each of these five steps in detail, relying heavily on Intellectual Ventures I LLC v. Symantec Corp. (Fed. Cir. 2016) to conclude that each presented only functional, result-oriented subject matter. Further, the claim was analogous to old and well-known manual call-routing techniques. And, in contrast to the claims in Enfish, LLC v. Microsoft Corp., (Fed. Cir. 2016), here there was no improvement to computing functionality; the claims here may have recited purported benefits, but did not recite how to achieve them.
Under part two of the Alice test, claim 1 did not recite an inventive concept. The plaintiff relied on Bascom Global Internet Services, Inc. v. AT&T Mobility LLC (Fed. Cir. 2016) (directed to “content filtering information retrieved from an internet computer network,” recited an “inventive concept,” and therefore were patent-eligible as a matter of law under 35 U.S.C. § 101.) But the better “comparator,” said the court, was Two-Way Media Ltd. v. Comcast Cable Communications (Fed. Cir. 2017), where a claim directed to “transmitting message packets over a communications network” was not patent-eligible where it simply recited conventional steps in a conventional order.
Finally, after dismissing plaintiff’s “perfunctory” preemption argument, the court took pains to explain that defendants’ motion was not prematurely granted. Even under Berkheimer v. HP Inc. (Fed. Cir. 2018), not every § 101 case involves genuine disputes about the material facts. Here
the Court accepted as true Plaintiff’s allegations that (1) user-specific handling, (2) transparent routing, (3) resiliency, and (4) communication blocking are significant and unconventional improvements upon prior technology.
But here the patents themselves provided no disclosure concerning how to achieve these benefits. Therefore, the “‘proffer of evidence’ is orthogonal to the Alice inquiry and Defendants’ motion is not premature.”