375 F. Supp. 3d 1110
N.D. Cal.2019Background
- Plaintiff owns two related VoIP patents ('815 and '005) claiming computerized methods/apparatus for routing calls by comparing caller and callee identifiers and using caller-specific profiles to classify calls as private or public and produce routing messages.
- Defendants (Twitter, Apple, AT&T, Verizon) moved to dismiss under 35 U.S.C. § 101, arguing the asserted claims are directed to abstract ideas implemented with generic computer components.
- Parties agreed representative claims: claim 1 of the '815 Patent (multi-network claims) and claim 74 of the '005 Patent (single-network claims).
- The PTAB previously issued and then reconsidered final written decisions in related IPRs; district suits against the four defendants were consolidated for pretrial purposes in the Northern District of California.
- The court evaluated the claims under the two-step Alice framework on a Rule 12(b)(6) record and found the asserted multi-network and single-network claims patent-ineligible under § 101.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether representative claims are directed to an abstract idea (Alice step 1) | Claims are directed to an improved call-routing technology that evaluates callee identifiers with caller-specific attributes to enable interoperability and user-specific behavior | Claims recite generalized steps (receive identifiers, locate profile, match, classify, produce routing message) and merely use computers as a tool; analogues exist in pre-computer switchboard practice | Court: Directed to the abstract idea of routing calls based on caller/callee characteristics; step 1 satisfied for invalidity |
| Whether claims contain an inventive concept transforming the abstract idea into patent-eligible subject matter (Alice step 2) | The claims recite a specially programmed routing controller and user-specific/transparent routing that was unconventional at the time | Limitations are generic computer functions (databases, matching, messaging); no technical improvement in computer functionality; ordered combination conventional | Court: No inventive concept; claim elements are well-known/conventional or generic; ordered combination not inventive; claims invalid under § 101 |
| Whether specification details or alleged innovations (user-specific calling, transparent routing) create factual disputes precluding dismissal | Specification and complaints identify user-specific and transparent routing features that purportedly capture an improvement | The asserted improvements are not captured in the claim language; details in the specification cannot rescue abstract claims that recite generic computer parts | Court: No genuine factual dispute preventing resolution on Rule 12; specification details not limiting claims; dismissal appropriate |
| Scope of dismissal (which claims) | N/A (dispute over claim groupings was agreed) | N/A | Court: GRANTED — multi-network claims (claims 1,7,12,27,28,72,73,92,111 of '815 and claims 49,73 of '005) and single-network claims (claims 74,75,77,78,83,84,94,96,99 of '005) invalid under § 101 |
Key Cases Cited
- Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (Sup. Ct.) (establishing two-step framework for § 101 abstract-idea analysis)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (Sup. Ct.) (laws of nature/abstract-idea limits and caution against claims that preempt basic tools)
- Bilski v. Kappos, 561 U.S. 593 (Sup. Ct.) (abstract idea preemption concerns; business-method precedent)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.) (claims improving computer functionality may be non-abstract)
- In re TLI Commc'ns LLC, 823 F.3d 607 (Fed. Cir.) (collecting/analyzing/storing data in generic terms is abstract)
- Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329 (Fed. Cir.) (telecom claims reciting generic processing, routing, controlling were abstract)
- BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.) (a non-conventional arrangement of known elements can supply an inventive concept)
- RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322 (Fed. Cir.) (generalized steps on a computer are abstract)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir.) (collecting, recognizing, storing data as abstract)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.) (existence of factual disputes about whether elements are well-understood, routine, and conventional can preclude § 101 resolution in some cases)