249 F. Supp. 3d 1123
N.D. Cal.2017Background
- Twilio sued Telesign for patent infringement asserting seven patents grouped into four families; this order addresses the ’051 (Delivery Receipts) and ’217 (Path Selection) patents.
- The ’051 patent claims methods of sending an outgoing telephony message via a first channel, receiving a message-delivery report via a different second channel, updating routing data based on that report, and selecting a routing option for subsequent messages.
- The ’217 patent claims methods performed at a multi-tenant communication platform to authenticate a request, look up routing address records that associate a destination with external communication providers, select providers, and request them to establish communication (i.e., enable multi-modal communication).
- Telesign moved to dismiss under Rule 12(b)(6), arguing the asserted claims are directed to patent-ineligible subject matter under 35 U.S.C. § 101 (Alice framework).
- The court applied the two-step Alice test: (1) whether claims are directed to an abstract idea, and (2) whether claim elements individually or as an ordered combination supply an inventive concept that transforms the claim into patent-eligible subject matter.
- The court concluded that all asserted claims of both the ’051 and ’217 patents are directed to abstract ideas (fundamental human practices/mental processes limited to a technological field) and lack an inventive concept, and therefore granted Telesign’s motion to dismiss as to those asserted claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether asserted claims of the ’051 patent are directed to patent-eligible subject matter under § 101 | Twilio: claims improve message-routing reliability by using different channels for delivery receipts and updating routing selection — an improvement in computer/network functionality | Telesign: claims recite the abstract idea of selecting the best routing option based on externally‑received feedback and use only generic computer implementation | Court: claims are directed to an abstract idea (selecting best option based on separately‑transmitted feedback) and lack an inventive concept; dismissed |
| Whether dependent and additional claims of the ’051 patent add inventive concept | Twilio: added limitations (e.g., coded identifiers, message modification) supply technical details and inventive combination | Telesign: added limitations are conventional or routine refinements | Court: additional limitations are generic or conventional; do not supply inventive concept; dismissed |
| Whether asserted claims of the ’217 patent are directed to patent-eligible subject matter under § 101 | Twilio: claims solve a mobile/OTT fragmentation problem and improve network/app functionality (multi-tenant platform enabling multi-modal communication) | Telesign: claims are directed to the abstract idea of looking up and selecting communication providers and use generic platform components | Court: claims are directed to an abstract idea (enabling multi-modal communication by lookup/selection) and are performable mentally; no inventive concept; dismissed |
| Whether dependent and other claims of the ’217 patent supply an inventive concept | Twilio: authentication, routing-address records, and multi-tenant context provide technical character | Telesign: those features are conventional and generic | Court: those features are routine and do not transform the abstract idea into patent-eligible subject matter; dismissed |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleading standard for plausible claims)
- Ashcroft v. Iqbal, 556 U.S. 662 (legal conclusions need not be accepted as true on Rule 12(b)(6))
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (two-step test for patent-eligibility under § 101)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (limitations: laws of nature, natural phenomena, and abstract ideas are not patentable)
- Bilski v. Kappos, 561 U.S. 593 (abstract‑idea principle and preemption concerns)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (claims directed to specific improvement in computer functionality can be patent-eligible)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (solutions necessarily rooted in computer technology may supply inventive concept)
- BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (inventive concept can arise from non-conventional, non-generic arrangement of known elements)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (§ 101 can be resolved on pleadings where character of claims is clear)
- CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (mental processes are abstract ideas)
- FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (claims to collecting/analyzing information can be abstract)
- Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (claims that gather and analyze information and display results are abstract)
- McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (automation limited to rules of a particular type that improve a technology may be patent-eligible)