Under Messaging Gateway Solutions, LLC v. Amdocs, Inc., No. CV 14-732-RGA, 2015 WL 1744343, at *4 (D. Del. Apr. 15, 2015), a claim may be patent eligible if it provides a solution “tethered to the technology that created the problem” and specifies how claim elements interact to achieve a “desired result which overrides conventional practice.”
On June 19, 2014, the Supreme Court issued its decision in Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2360 (2014), holding that the abstract idea of an intermediated settlement was not patentable under Section 101 of the Patent Act. The Supreme Court confirmed that courts determine patent eligibility under Section 101 using the two-part test applied in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012). Alice, 134 S. Ct. at 2355. In Alice, the claims at issue “related to a computerized scheme for mitigating “settlement risk”—i.e., the risk that only one party to an agreed-upon financial exchange will satisfy its obligation.” Id. at5 2352. The Supreme Court first determined that the claims at issue were “drawn to the abstract idea of intermediated settlement.” Id. at 2355. Likening the claims at issue to other claims previously held unpatentable, the Supreme Court stated that the “the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Id. at 2356 (citations omitted). Turning to the next step of the Mayo test, the Supreme Court held that “the method claims, which merely require[d] generic computer implementation, fail[ed] to transform that abstract idea into a patent-eligible invention.” Id. at 2357. After tracing the history of Section 101 jurisprudence, the Supreme Court held that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Id. at 2358. As a result, the Supreme Court affirmed the Federal Circuit’s conclusion of patent ineligibility. Id. at 2360.
Under this framework, courts must “distinguish patents that claim patent-ineligible laws of nature, natural phenomena, and abstract ideas—or add too little to such underlying ineligible subject matter—from those that claim patent-eligible applications of those concepts.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014). First, a court must ask if the claim is “directed to one of those patent-ineligible concepts,” i.e., a law of nature, physical phenomenon, or abstract idea. Alice, 134 S. Ct. at 2355. Second, if the claim is directed to one of these concepts, the court must ask “[w]hat else is there in the claim before us?” Mayo, 132 S. Ct. at 1297. This second step determines whether there is an “inventive concept” that “ensure[s] that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice, 134 S. Ct. at 2355.
Since Alice, a perceived increase in patent invalidations based on Section 101 ineligibility followed. Notwithstanding the flurry of activity since that decision, at its core, Alice simply held that a pre-existing abstract concept (in the case of Alice, the concept of intermediated settlement) is not patent eligible through mere recitation of a generic computer.
Recently, in Messaging Gateway Solutions, LLC v. Amdocs, Inc., a District Court in the District of Delaware applied the corollary to the above-holding in Alice – that “applications of abstract ideas to ‘a new and useful end’ are patent eligible” – to deny several defendants’ motions for judgment on the pleadings of invalidity pursuant to 35 U.S.C. § 101. No. CV 14-732-RGA, 2015 WL 1744343, at *4 (D. Del. Apr. 15, 2015) (quoting Alice, 134 S. Ct. at 2354). The claim being tested – claim 20 U.S. Patent No. 8,750,183 (“the ‘183 patent”) – on the motions involved:
- A method of using a computer system to facilitate two-way communication between a mobile device and an Internet server, comprising:
- the computer system receiving a text message via a first communication path;
- the computer system inserting at least a message body of the text message into an Internet Protocol (IP) message; and
- the computer system transmitting the IP message to the Internet server, via a second communication path,
- wherein the text message originates from the mobile device as a short message service (SMS) text message, and wherein the SMS text message contains a multidigit address that is fewer than seven digits and that is associated with a URL of the internet server.
Id. at *2-3.
In following the first part of the two-part test under Mayo, and re-affirmed in Alice, the District Court found that Claim 20 was directed to the abstract idea of translation, analogizing the claim to “a translator assisting two people who speak different languages to communicate with each other.” Id. at *4. Notably, the District Court chose a term – “translation” – that appears nowhere in Claim 20 to describe the “‘fundamental concept ... wrapped up in the claim.’” Id. (quotingAccenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013), cert. denied, 134 S. Ct. 2871, 189 L. Ed. 2d 833 (2014)).
Moving to part-two of the Mayo test, the District Court found that, despite being directed to an abstract idea, Claim 20 contained an inventive concept and, therefore, was patent eligible.Messaging Gateway Solutions, 2015 WL 1744343, at *5. The District Court relied on the decision in DDR Holdings, LLC v. Hotels.com, L.P., supra, 773 F.3d 1245, 1255 (Fed. Cir. 2014), in which the Federal Circuit held that the disputed claims were patent eligible because, as the District Court in Messaging Gateway Solutions explained, the claims “did not ‘merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet,’ but instead “solved a problem specific to the realm of computer networks in a way that was rooted in computer technology.” Messaging Gateway Solutions, 2015 WL 1744343, at *5 (quoting DDR Holdings).
Like the claims in DDR holdings, Claim 20, the District Court found, was “’necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.’”; it was “directed to a problem unique to text-message telecommunication between a mobile device and a computer.” Id. (quoting DDR Holdings). Furthermore, the District Court found that Claim 20 “specifie[d] how an interaction between a mobile phone and a computer is manipulated in order to achieve a desired result which overrides conventional practice.” Id.
Additionally, the District Court cautioned against being tempted by exaggerated arguments of an abstract idea:
If one looks at almost any patent from far enough away, it could arguably claim an abstract idea. For example, Alexander Graham Bell's patent could be said to claim the abstract idea of oral communication. But his invention was not the concept of oral communication itself; it was a technological innovation that allowed a type of oral communication between people who could otherwise not communicate in that way.
According to the District Court in Messaging Gateway Solutions, a claim may be patent eligible if it provides a solution “tethered to the technology that created the problem” and specifies how claim elements interact to achieve a “desired result which overrides conventional practice.” Id.