173 F. Supp. 3d 1324
N.D. Ga.2016Background
- Mtel owns U.S. Patent No. 5,786,748 claiming a method to notify addressees of express-mail delivery status via wireless page messages (e.g., SMS/email) including notifications for delivery and for non-delivery by an appointed time.
- Mtel sued UPS for patent infringement, alleging UPS provides tracking and status updates (including SMS) that practice the ’748 patent claims.
- After claim construction and a Special Master report on summary judgment, UPS moved for judgment on the pleadings under 35 U.S.C. § 101 (Alice), arguing the patent claims an unpatentable abstract idea.
- UPS’s § 101 challenge was raised relatively late in the case; the court nevertheless considered the motion because patent eligibility is a threshold issue that would arise at trial.
- The court analyzed the claims under the two-step Alice framework: (1) whether the claims are directed to an abstract idea and (2) whether they contain an inventive concept sufficient to render them patent-eligible.
- The Court granted UPS’s motion, finding the patent directed to the abstract idea of delivery notification and lacking a sufficient inventive concept beyond generic communication technologies.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the ’748 patent is directed to an abstract idea | Mtel: Claims are specific to wireless paging infrastructure and particular data elements (paging operations center, ID number, connectionless networks) and thus not an abstract idea | UPS: Core of the claims is the longstanding business practice of notifying recipients about delivery status — an abstract idea | Held: Claims are directed to the abstract idea of providing delivery notification; business practice longstanding and conventional |
| Whether the claims add an "inventive concept" under Alice step two | Mtel: Limitations (wireless page message, connectionless framework, paging operations center) are specific structures that transform the claim | UPS: Those limitations are generic communications technologies and do not add significantly more than the abstract idea | Held: No inventive concept; using ubiquitous technologies (SMS/email, networks) is insufficient to transform the abstract idea into a patent-eligible invention |
| Whether UPS waived or unduly delayed asserting a § 101 defense | Mtel: UPS failed to disclose § 101 contentions earlier and therefore waived the defense | UPS: § 101 is a question of law that can be decided without an extensive factual record; late raising does not bar adjudication | Held: No waiver; court could and would decide § 101 despite UPS’s timing, though court noted parties may discuss costs given litigation timeline |
Key Cases Cited
- Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014) (establishes two-step test for § 101 patent eligibility and forbids monopolization of abstract ideas via generic computer implementation)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (clarifies limits on patenting laws of nature and abstract ideas; quantity of added steps insufficient without qualitative inventive concept)
- Bilski v. Kappos, 561 U.S. 593 (2010) (held fundamental methods of organizing human activity are not patentable)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (upheld claims tied to solving a specific Internet-centric technological problem)
- Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (claims directed at showing an ad before content delivery were abstract despite Internet implementation)
- Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363 (Fed. Cir. 2015) (claims for storing/tracking financial data and communicating summaries were directed to the abstract idea of budgeting)
- SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319 (Fed. Cir. 2010) (upheld patent where claims were directed to a specific technological problem and solution related to GPS receiver positioning)
- Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266 (Fed. Cir. 2012) (patent claims primarily concerned with management of financial products, not the computer machinery used)