On October 24th, 2014, Judge Brinkema of the Federal District Court for the Eastern District of Virginia joined the ranks of a growing number of district court judges that have held patent claims invalid under 35 U.S.C. § 101 and the Supreme Court’s new ruling in Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347, 2350, 189 L. Ed. 2d 296 (2014). The claims of the four patents at issue were generally directed to solving an accounting and billing problem faced by network service providers. Specifically, the claims were directed to a system which facilitated collection of a customer’s network usage records and transformed them into a format suitable for accounting and billing. Interestingly, before performing her analysis, Judge Brinkema likened the Alice “two step test” to Justice Stewart’s famous test for obscenity—“I know it when I see it.” Judge Brinkema then explained that her analysis was guided by the policy concerns regarding preemption that underlie Section 101 jurisprudence and a comparison to claims that were previously invalidated for being directed “organizing human activity.”
The court went on to find that the asserted claims for each of the four patents failed step one of the Alice analysis as they were directed to four different abstract ideas related the same system, namely, “correlating two network accounting records to enhance the first record;” “using a database to compile and report on network usage information;” “generat[ing] a single record reflecting multiple services;” and “reporting on the collection of network usage information from a plurality of network devices.” The court additionally found that none of the asserted claims added anything more to these “abstract ideas” than generic computer hardware, so they also failed Alice’sstep two. Notably, the court declined to consider whether or not the process as a whole was novel in making the determination. “A person may have invented an entirely new and useful advance, but if the patent claims sweep too broadly, or only claim the idea that was achieved rather than implementation of the idea, then § 101 directs that the patent is invalid.” Thus, even if the idea(s) that grounded the claimed systems and methods were novel, the claims were too broad and claimed too much to be considered patent eligible.
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 1:10CV910 LMB/TRJ, 2014 WL 5430956 (E.D. Va. Oct. 24, 2014) (Judge Leonie M. Brinkema).