207 F. Supp. 3d 405
D. Del.2016Background
- Plaintiff sued asserting the ’970 patent (location determination system) against multiple defendants; claims 14–17 and 19 were at issue. The patent describes an intermediary that queries multiple remote tracking systems and returns location information to subscribers.
- The court had previously stayed the ’970 track for PTAB inter partes review; after the stay was lifted defendants renewed Rule 12(c) motions arguing § 101 invalidity.
- Claim 14 (representative) recites: accept subscriber input identifying mobile platforms; determine which remote tracking system can locate each platform; communicate requests to that system; receive locations; transmit locations to subscriber. Dependent claims add computer components and map-display steps.
- Defendants argued the claims recite the abstract idea of relaying location information through an intermediary and add only conventional computer/communication components; claims could be performed by humans.
- Plaintiff argued the claims solve a specific technological problem (integrating heterogeneous tracking systems), point to structural limitations (systems “adapted” by predetermined properties), and relied on PTO allowance/reexamination outcomes.
- The court analyzed the claims under the Alice/Mayo two-step framework and concluded the claims are directed to an abstract idea and lack an inventive concept, granting judgment on the pleadings for defendants.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the asserted claims are directed to patent-eligible subject matter under § 101 (Alice step one) | Claims solve a specific technological problem integrating disparate tracking systems; structural claim language shows a technological solution | Claims are directed to the abstract idea of relaying location information via an intermediary; physical components are generic | Claims are directed to an abstract idea (relaying location info via an intermediary) |
| Whether the claims contain an "inventive concept" to transform the abstract idea into patent-eligible subject matter (Alice step two) | Limitations requiring specially adapted tracking systems and map database constitute a sufficient inventive concept; PTO allowance supports validity | The limitations are vague/functional and amount to looking up capabilities in a database and using generic computer components; no inventive concept | Claims lack an inventive concept; limitations are conventional/functional and do not make the abstract idea patent-eligible |
| Role of generic computer components and map-display limitations | Computer and map/database limitations are specific and tied to the technological context | Generic computer, storage medium, and map display are conventional and insufficient | Adding generic computer components or displaying locations on a map does not supply an inventive concept |
| Reliance on prior art or PTO action in § 101 analysis | PTO allowance and reexamination findings show novelty and support eligibility | PTO determinations are irrelevant to § 101’s abstract-idea inquiry | PTO allowance/reexamination is not dispositive for § 101; court rejects this as an argument for eligibility |
Key Cases Cited
- Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (U.S. 2014) (establishes the two-step Alice/Mayo framework for abstract ideas)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (U.S. 2012) (requires more than applying a law of nature or abstract idea with the words "apply it")
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (distinguishes claims that improve computer functionality from those that use generic computer components)
- Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015) (consider claims in their entirety to determine if directed to an abstract idea)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (collecting/recognizing/storing data held abstract; role of computer must be more than routine)
- TLI Communications LLC v. AV Automotive, 823 F.3d 607 (Fed. Cir. 2016) (specification that describes physical components as generic environment supports abstract-idea finding)
- DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014) (claims can be patent-eligible when they solve a problem uniquely rooted in computer technology)
- Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (result-focused, functional claim language and generic computer implementation do not supply an inventive concept)