Plaintiff, Innova Patent Licensing, LLC ("Innova") filed a patent infringement action against Alcatel-Lucent Holdings ("Alcatel") for a patent claiming methods for using a mail processing program to scan electronic messages to obtain additional information. Alcatel challenged the patent on the ground that it did not claim eligible subject matter under 35 U.S.C. § 101 and moved to dismiss.
The court stated that "[u]nder the patent laws, certain broad categories of subject matter are eligible for patent protection," and cited the language from Section 101 (" Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or a new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title") and the United States Supreme Court's decision in Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) ("in choosing such expansive terms modified by the comprehensive 'any,' Congress plainly contemplated that the patent laws would be given wide scope").
The court then addressed the Federal Circuit's recent decision in Ultramercial, LLC v. Hulu, LLC, Case No. 2010-1544 (Fed. Cir. Sept. 15, 2011), in which the Federal Circuit "observed that the statute describes broadly permissible subject matter, and that judicial case law has created only three categories of subject matter outside the bounds of § 101--that is, laws of nature, physical phenomena, and abstract ideas." The court noted that the Ultramercial decision analyzed whether a patented method for monetizing and distributing copyrighted products over the Internet claimed patentable subject matter and the Federal Circuit focused its analysis on the question of abstractness. "Although the mere idea that advertising could be used as currency is abstract, the patent did not simply claim that idea. It claimed a practical application of that idea. The court recounted the steps required of the method at issue and observed it would likely require complex computer programming."
The court also considered the Federal Circuit's decision in CyberCource Corp. v. Retail Decisions, Inc., 2011 WL 3584472, at *3 (Fed. Cir. Aug. 16, 2011) in which the Federal Circuit found that two claims of a patent did not contain patentable subject matter under § 101. "The first claim that failed did so because it recited a series of steps that could be performed entirely in the human mind." The second claim that failed was not eligible because "[a] series of mental steps that were otherwise ineligible did not become eligible simply because they were performed by a computer."
After reviewing these decisions, the court determined that the claims in this case were closer to Ultramercial than CyberSource because "[h]ere, the claims recite a method performed using a mail processing program. . . . The specification describes an invention that is a useful improvement to an existing technology--email messaging. The method is performed using a mail processing program. The scanning of the message and retrieval of context information from locations external to the message connote the presence of computer hardware."
Thus, the court denied the motion to dismiss finding that the steps may not involve complex algorithms but they would not be so simple as to involve purely mental steps in which the computer's use was merely incidental.
* * *
This court decision highlights the ongoing debate over the scope of process claims that are patentable under § 101. The distinguishing feature in this case was that the method required more than mental steps and was not something that could be performed entirely in the human mind, but would require some programming of the computer.