Amdocs (Israel) Limited v. Openet Telecom, Inc.
841 F.3d 1288
Fed. Cir.2016Background
- Amdocs sued Openet for infringement of four patents (’065, ’510, ’984, ’797) covering a distributed system that collects, filters, aggregates, enhances, and reports network usage/accounting data.
- Patents disclose a distributed architecture with network devices, Information Source Modules (ISMs), gatherers, a Central Event Manager (CEM), and a central database; the architecture processes data close to its source to reduce network load and database size.
- After this court’s prior opinion (Amdocs I) resolving some claim constructions, Openet moved for judgment on the pleadings under § 101 based on Alice; the district court invalidated the asserted claims as directed to abstract ideas.
- On appeal, the Federal Circuit majority applied the Alice/Mayo two-step test, accepted the district court’s characterizations of the underlying abstract ideas for argument’s sake, but found the claims (viewed with the specification and constructions) recited an ‘‘inventive concept’’ or improved computer functionality tied to the distributed architecture.
- The majority reversed the district court as to all asserted claims, holding they were § 101-eligible and remanded for further proceedings on other patentability issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the asserted claims "directed to" an abstract idea (Alice step 1)? | Amdocs: claims solve a network-specific technological problem (distributed data collection/processing) and are directed to an application/improvement in computer functionality. | Openet: claims merely collect, correlate, and report data—an abstract idea/electronic record-keeping. | Majority assumed the district court’s abstract-idea characterizations for argument’s sake but found claims eligible overall; dissent would find some claims directed to abstract ideas. |
| Do the claims recite an "inventive concept" beyond the abstract idea (Alice step 2)? | Amdocs: limitations (e.g., real-time collection, filtering/aggregation, ‘‘completing/enhancing’’ in a distributed fashion, ISMs/gatherers placement) yield an unconventional, technological solution. | Openet: claimed components are generic computer functions; distributed architecture is conventional field-of-use and cannot supply the inventive concept. | Majority: ordered combination of limitations and claim constructions tied to the distributed architecture supply an inventive concept; claims eligible. Dissent: distributed limitation is not meaningfully present in all claims and does not supply an inventive concept for some claims. |
| May the specification be used to supply limiting structure that affects § 101 analysis? | Amdocs: yes — claims must be read in view of the specification and the court’s prior constructions (e.g., ‘‘enhance’’ means distributed). | Openet: claims themselves must recite the limiting structure; the specification cannot save otherwise abstract claims. | Majority: examined claims in light of the specification and prior constructions to find the required technical limitations; dissent disagrees and emphasizes claim language first. |
| Outcome and remedy | Amdocs: reversal and remand for further proceedings on other patentability issues. | Openet: affirm § 101 invalidity. | Court: Reversed district court’s § 101 rulings as to all asserted claims and remanded for further proceedings (no costs). |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (establishes two-step framework for patent-eligibility analysis)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) (frames step-two inventive-concept inquiry)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (claims directed to a specific improvement in computer functionality may not be abstract)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (claims that solve Internet-specific technological problems via particular interactions can be eligible)
- BASCOM Global Internet Servs., Inc. v. AT & T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (ordered combination of generic components at a specific location provided inventive concept)
- Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (collecting and combining data via mathematical correlations held abstract)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014) (claims to collecting, recognizing, and storing data held abstract)
- In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016) (claims to classifying/storing images held abstract where components were generic)
- Diamond v. Chakrabarty, 447 U.S. 303 (1980) (broad statutory reach of § 101 and limits on judicial exceptions)