The district court for the district of Delaware found claims valid under 35 U.S.C. § 101, despite defendants’ arguments that the claims only added “generic computer components or field of use limitations” to an abstract idea, because the claims “solved a problem specific to the realm of computer networks in a way that was rooted in computer technology.”
First, the court addressed the standard of proof and recognized, “[t]here is a lack of direct authority as to whether the clear and convincing evidence standard applies to the question of patentability under § 101.” Although the court was “inclined to agree with defendants” that “the clear and convincing standard should not apply to questions of law,” it declined to decide the issue because it found the claims “patent-eligible under either standard.”
Turning next to the two-part § 101 analysis under Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014), the court first determined whether the challenged claims were drawn to an abstract idea. The court analyzed representative Claim 20 – directed to a computer system that (1) receives from a mobile device an SMS text message containing a URL address a that is fewer than seven digits, (2) inserts the text message into an IP message, and (3) transmits the IP message – and found “that Claim 20 is directed to the abstract idea of translation.” The court reasoned, “a translator receives a message in one language, translates it into another, and delivers the translated message.”
The court then turned to the second Alice prong, whether the claims contained an “inventive concept . . . sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself.” Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), the court found that “Claim 20 contains an inventive concept sufficient to render it patent-eligible” because it “is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The court reasoned, “Claim 20 is directed to a problem unique to text-message telecommunication between a mobile device and a computer. The solution it provides is tethered to the technology that created the problem.” Further, the court found, “Claim 20 contains meaningful limitations that prevent it from preempting the abstract idea of receiving, translating, and delivering a message. It is limited to SMS text messages between a mobile device and the Internet.”
Messaging Gateway Solutions LLC v. Amdocs, Inc. et al., Case No. 14-cv-00732-RGA (D. Del., April 15, 2015) (Andrews, J.).