Amdocs (Israel) Limited v. Openet Telecom, Inc.
15-1180
| Fed. Cir. | Nov 1, 2016Background
- Amdocs sued Openet for infringement of four patents (’065, ’510, ’984, ’797) covering a distributed system for collecting, filtering, aggregating, enhancing, and reporting network usage/accounting data.
- The patents describe ISMs, gatherers, a Central Event Manager (CEM), a central database, and a distributed architecture that processes data close to its sources to reduce network congestion and large central databases.
- The district court, applying Alice/Mayo, granted judgment on the pleadings for Openet, holding the asserted claims ineligible under 35 U.S.C. § 101 as directed to abstract ideas without an inventive concept.
- On appeal, the Federal Circuit majority reversed as to all asserted claims, concluding that the claims recite an unconventional distributed technological solution (or recite sufficient limitations tied to that architecture) and therefore survive § 101.
- The court reviewed § 101 de novo, applied the two-step Alice/Mayo framework, considered claim language in light of the specification, and compared these claims to post-Alice § 101 precedent.
- Judge Reyna dissented, arguing the majority improperly imported limitations from the specification into the claims, failed to identify the asserted abstract ideas at step one in a meaningful way for some claims, and would have affirmed ineligibility for at least the ’065 and ’797 patents.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the asserted claims directed to patent-ineligible abstract ideas under § 101? | Amdocs: claims are tied to a specific distributed architecture that improves computer/network functionality, so not an abstract idea. | Openet: claims merely automate conventional data collection/recordkeeping and thus are directed to abstract ideas. | Majority: even if district court’s described abstract ideas are accepted, claims contain an inventive concept tied to the distributed architecture and are eligible; reversed and remanded. |
| Do the claims recite an "inventive concept" under Alice step two? | Amdocs: limitations (e.g., distributed enhancement, real‑time multi‑layer collection, gatherers/ISMs) form an inventive concept when read with the spec. | Openet: limitations are generic computer/database functions and do not transform the abstract idea into patentable subject matter. | Majority: the ordered combination (distributed processing/architecture) supplies an inventive concept for representative claims; eligibility satisfied. |
| May the specification be used to inform the § 101 analysis of claim scope and inventive concept? | Amdocs: yes — claim meaning and inventive concept must be assessed in light of the specification. | Openet: reliance on the spec cannot rescue claims that are facially abstract and recite generic computer implementation. | Majority: analyze claims in light of the specification; specification supports that claims require unconventional distributed operation. Dissent: disagrees, warns against importing limitations not in claim text. |
| Procedural: was judgment on the pleadings proper post‑Alice? | Amdocs: Alice motion was procedurally barred or previously addressed; claims require factual development. | Openet: Alice changes/clarifies law; § 101 could be resolved on the pleadings. | Majority: § 101 is a pure question of law reviewable on the pleadings; reversed on merits and remanded for unresolved issues (e.g., §§ 102/103/112). |
Key Cases Cited
- Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) (establishes the two‑step Alice/Mayo framework for abstract ideas and inventive concept)
- Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (2012) (source of the ‘‘inventive concept’’ standard applied in step two)
- Diamond v. Chakrabarty, 447 U.S. 303 (1980) (broad statutory scope of § 101 and limits for laws of nature, natural phenomena, abstract ideas)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (claims directed to a specific improvement in computer functionality can be eligible under step one)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (claims that recite a technological solution rooted in computer technology can supply an inventive concept)
- BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (ordered combination of conventional components can provide an inventive concept if arranged in an unconventional way)
- Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (holding claims directed to organizing information via mathematical correlations were abstract and ineligible)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014) (claims reciting data collection, recognition, and storage characterized as an abstract idea)
- In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016) (claims directed to classifying and storing digital images were abstract and lacked inventive concept)