Bеfore the Court is Defendants' consolidated motions to dismiss, which contend that the asserted claims of the patents-in-suit fail to recite patent-eligible subject matter under
I. BACKGROUND
A. Factual Background
1. The Parties
Plaintiff is a Nevada corporation with its principal place of business in Bellevue, Washington. ECF No. 65 at ¶ 5. Plaintiff "owns a portfolio of [Voice over Internet Protocol] patents and patent applications."
Defendant Twitter is a California corporation with its principal place of business in San Francisco, California.
Defendant Apple is a California corporation with its principal place of business in Cupertino, California. Case No. 18-CV-06217-LHK, ECF No. 11 at ¶ 7. Apple "provides, supports and/or operates messaging technology, including iMessage, an instant messaging service supported by Apple's Messages application and computer infrastructure that allows smartphone and desktop users to send messages including text, images, video and audio to other users."
Defendant AT & T is a Delaware corporation with its principal place of business in Bedminster, New Jersey. Case No. 18-CV-06177-LHK, ECF No. 59 at ¶ 2. AT & T "supports and operates a messaging platform ... [that] allows smartphone users to send messages including text, images, video and audio to others."
Defendant Verizon is a Delaware corporation with its principal place of business in Basking Ridge, New Jersey. Case No. 18-CV-06054-LHK, ECF No. 119 at ¶ 2. Verizon "supports and operates a messaging platform ... [that] allows smartphone users to send messages including text, images, video and audio to others."
2. The Patents
The '815 Patent and the '005 Patent (collectively, the "Patents") are both titled "Producing Routing Messages for Voice over IP Communications." '815 Patent at front page; '005 Patent at front page. The '815 Patent was filed on November 1, 2007 and was issued on September 24, 2013. The '005 Patent was filed on August 13, 2013 and was issued on November 3, 2015. The '815 Patent and the '005 Patent share the same specification.
Defendants posit that the asserted claims of the Patents fall within two categories: "multi-network claims" and "single-network claims." Mot. at 2. Defendants argue that asserted claims 1, 7, 12, 27, 28, 72, 73, 92, and 111 of the '815 Patent and claims 49 and 73 of the '005 Patent are multi-network claims.
In addition, Defendants identify claim 1 of the '815 Patent as representative of the multi-network claims, an identification that Plaintiff does not dispute. Defendants identify claim 74 of the '005 Patent as representative of the single-network claims, an identification that Plaintiff also does not dispute. Thus, the Court will adopt the parties' identification of representative claims. Claim 1 of the '815 Patent shall be representative of the multi-network claims, and claim 74 of the '005 Patent shall be representative of the single-network claims.
In general, the asserted claims of the Patents relate to the process of routing calls (either voice or video) between a caller and a callee, in which calls are classified as either public network calls or private network calls.
Figure 1 is helpful to understanding the invention. "[A] system for making voice over IP telephone/videophone calls is shown generally at [item] 10."
Assume that the Vancouver user (item 12) is attempting to call the Calgary user (item 15). The caller (item 12) will send a message to the Vancouver super node (item 10) and in response, the call controller (item 14) sends a call routing controller request to the routing controller (item 16).
As aforementioned, Plaintiff asserts the multi-network claims,
Claim 1 of the '815 Patent recites:
1. A process for operating a call routing controller to facilitate communication between callers and callees in a system comprising a plurality of nodes with which callers and callees are associated, the process comprising:
in response to initiation of a call by a calling subscriber, receiving a caller identifier and a callee identifier;
locating a caller dialing profile comprising a username associated with the caller and a plurality of calling attributes associated with the caller;
determining a match when at least one of said calling attributes matches a portion of said callee identifier;
classifying the call as a public network call when said match meets public network classification criteria and classifying the call as a private network call when said match meets private network classification criteria;
when the call is classified as a private network call, producing a private network routing message for receipt by a call controller, said private network routing message identifying an address, on the private network, associated with the callee;
when the call is classified as a public network call, producing a public network routing message for receipt by the call controller, said public network routing message identifying a gateway to the public network.
Claim 74 of the '005 Patent recites:
74. A method of routing communications in a packet switched network in which a first participant identifier is associated with a first participant and a second participant identifier is associated with a second participant in a communication, the method comprising:
after the first participant has accessed the packet switched network to initiate the communication, using the first participant identifier to locate a first participant profile comprising a plurality of attributes associated with the first participant;
when at least one of the first participant attributes and at least a portion of the second participant identifier meet a first network classification criterion, producing a first network routing message identifying an address in a first portion of the packet switched network, the address being associated with the second participant, the first portion being controlled by an entity; and
when at least one of the first participant attributes and at least a portion of the second participant identifier meet a second network classification criterion, producing
'005 Patent at 43:41-65.
As aforementioned, the parties have divided the asserted claims into two categories: the multi-network claims, and the single network claims. The difference between the two types of claims lies within the claims' preambles. For instance, claim 1 of the '815 Patent, which is representative of the multi-network claims, discloses a "call routing controller to facilitate communication between callers and callees in a system comprising a plurality of nodes. " '815 Patent at 36:14-16 (emphasis added). Thus, claim 1 requires a call routed through a plurality of nodes, which is why it is a multi-network сlaim; each node comprises a different network. On the other hand, claim 74 of the '005 Patent, which is representative of the single-network claims, discloses "routing communications in a packet switched network." '005 Patent at 43:41-42 (emphasis added). Thus, claim 74 of the '008 Patent refers to routing communications through a single packet switched network, as opposed to multiple nodes (i.e. networks) like in claim 1 of the '815 Patent.
B. Procedural History
Plaintiff has filed suit against Twitter, Apple, Verizon, and AT & T. The parties filed identical omnibus motions to dismiss, oppositions, and replies in all 4 cases. In addition, there are various inter partes review proceedings before the Patent Trial and Appeal Board concerning the patents-in-suit. The Court first discusses the IPR proceedings, then the district court suits against Twitter, Apple, Verizon, and AT & T.
1. The IPR Proceedings
On June 15, 2016, Apple petitioned for inter partes review ("IPR") of the '005 Patent in proceeding number IPR2016-01198, and for IPR of the '815 Patent in proceeding number IPR2016-01201. Both of Apple's IPR petitions were granted. On the other hand, AT & T also filed 3 IPR petitions with the PTAB, which denied institution of AT & T's petitions. ECF No. 77 at 4 n.4. Verizon and Twitter do not appear to have filed IPRs of the '005 and '815 Patents.
On November 20, 2017, the PTAB in Apple's IPRs issued final written decisions rejecting Apple's obviousness arguments and upholding the validity of the '005 and the '815 Patents. See IPR2016-01198, Paper 53; IPR2016-01201, Paper 54. However, during the pendency of both of Apple's IPR proceedings, Plaintiff's former chief operating officer and chairman sent unauthorized ex parte communications to the PTAB. IPR2016-01198, Paper 70 at 3. In light of these ex parte communications, on December 21, 2018, the PTAB sanctioned Plaintiff by allowing a new panel of the PTAB to reconsider the final written decisions on the '005 and the '815 Patents on rehearing.
2. The Twitter Litigation
On October 6, 2016, Plaintiff first filed suit against Twitter in the District of Nevada. ECF No. 1. On January 31, 2017, the District of Nevada granted the parties' stipulation to stay the Twitter case pending the outcome of the IPR proceedings instituted by Apple chаllenging the validity of the '815 and '005 Patents. ECF No. 12. On January 26, 2018, the parties submitted a joint status report representing that the Patent Trial and Appeal Board ("PTAB") had issued final written decisions in Apple's
On February 28, 2018, Twitter moved to change venue to the Northern District of California. ECF No. 27. On July 23, 2018, the District of Nevada granted Twitter's motion for change of venue to the Northern District of California. ECF No. 41.
On November 15, 2018, this Court entered an order consolidating the Twitter action with the separately-filed Apple, AT & T, and Verizon actions (discussed below) for pretrial purposes. ECF No. 64. Also on November 15, 2018, Plaintiff filed a first amended complaint against Twitter. ECF No. 65.
3. The Apple Litigation
On February 9, 2016, Plaintiff first filed suit against Apple in the District of Nevada. Case No. 18-CV-06217-LHK, ECF No. 1. On April 6, 2016, Plaintiff filed an amended complaint against Apple.
4. The Verizon and AT & T Litigation
On February 10, 2016, Plaintiff first filed suit against both Verizon and AT & T in the same case in the District of Nevada. Case No. 18-CV-06177-LHK, ECF No. 1. On April 6, 2016, Plaintiff filed an amended complaint.
After AT & T was severed from the Verizon suit, the Verizon suit proceеded separately. On October 1, 2018, the District of Nevada granted Plaintiff and Verizon's stipulation to transfer the case to the Northern District of California. Case No. 18-CV-06054-LHK, ECF No. 89. On November 15, 2018, Plaintiff filed a third amended complaint asserting the Patents against only Verizon, with the AT & T suit proceeding separately.
5. The Consolidated Motions to Dismiss
On January 10, 2019, Defendants, asserting that the patents-in-suit are directed to unpatentable subject matter under
On February 7, 2019, Plaintiff filed identical oppositions. ECF No. 77 ; Case No. 18-CV-06217-LHK, ECF No. 81 ; Case No. 18-CV-06177-LHK, ECF No. 68 ; Case No. 18-CV-06054-LHK, ECF No. 127. On February 12, 2019, Plaintiff filed identical corrected oppositions. ECF No. 77 ("Opp.") ; Case No. 18-CV-06217-LHK, ECF No. 83 ;
On February 28, 2019, Defendants filed identical consolidated replies. ECF No. 78 ("Reply") ; Case No. 18-CV-06217, ECF No. 84 ; Case No. 18-CV-06177-LHK, ECF No. 70 ; Case No. 18-CV-06054-LHK, ECF No. 129.
On March 13, 2019, Plaintiff filed identical administration motions for leave to file a sur-reply. ECF No. 79 ; Case No. 18-CV-06217-LHK, ECF No. 91 ; Case No. 18-CV-06177-LHK, ECF No. 71 ; 18-CV-06054-LHK, ECF No. 130. According to Civil Local Rule 7-3(d), once a reply has been filed, "no additional memoranda, papers or letters may be filed without prior Court approval." The Court finds that the issues have been sufficiently briefed without needing to rely on a sur-reply. Thus, the administrative motions for leave to file a sur-reply are DENIED.
II. LEGAL STANDARD
A. Motion to Dismiss Under Federal Rule of Civil Procedure 12(b)(6)
Pursuant to Federal Rule of Civil Procedure 12(b)(6), a defendant may move to dismiss an action for failure to allege "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly ,
Fоr purposes of ruling on a Rule 12(b)(6) motion, the Court "accept[s] factual allegations in the complaint as true and construe[s] the pleadings in the light most favorable to the nonmoving party." Manzarek v. St. Paul Fire & Marine Ins. Co. ,
B. Motion to Dismiss for Patent Eligibility Challenges Under
Defendant's motion argues that the patents-in-suit fail to claim patent-eligible
Although claim construction is often desirable, and may sometimes be necessary, to resolve whether a patent claim is directed to patent-eligible subject matter, the Federal Circuit has explained that "claim construction is not an inviolable prerequisite to a validity determination under § 101." Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.) ,
C. Substantive Legal Standards Applicable Under
1. Patent-Eligible Subject Matter Under
Section 101 of Title 35 of the United States Code"defines the subject matter that may be patented under the Patent Act." Bilski v. Kappos ,
In Alice , the leading case on patent-eligible subject matter under § 101, the U.S. Supreme Court refined the "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts" originally set forth in Mayo ,
First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, "[w]hat else is there in the claims before us?" To answer that question, we consider the elements of each claim both individually and "as an ordered combinаtion" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application. We have described step two of this analysis as a search for an " 'inventive concept' "- i.e. , an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."
2. Alice Step One-Identification of Claims Directed to an Abstract Idea
Neither the U.S. Supreme Court nor the Federal Circuit has set forth a bright-line test separating abstract ideas from concepts that are sufficiently concrete so as to require no further inquiry under the first step of the Alice framework. See, e.g. , Alice ,
Two of the U.S. Supreme Court's leading cases concerning the "abstract idea" exception involved claims held to be abstract because they were drawn to longstanding, fundamental economic practices. See Alice ,
Similarly, the U.S. Supreme Court has recognized that information itself is intangible. See Microsoft Corp. v. AT & T Corp. ,
However, the determination of whether other types of computer-implemented claims are abstract has proven more "elusive." See, e.g. , Internet Patents Corp. v. Active Network, Inc. ,
For example, courts have considered whether the claims "purport to improve the functioning of the computer itself," Alice ,
Similarly, the Federal Circuit has found that claims directed to a "new and useful technique" for performing a particular task were not abstract. See Thales Visionix Inc. v. United States ,
Another helpful tool used by courts in the abstract idea inquiry is consideration of whether the claims have an analogy to the brick-and-mortar world, such that they cover a "fundamental ... practice long prevalent in our system." Alice ,
Courts will also (or alternatively, as the facts require) consider a related question of whether the claims are, in essence, directed to a mental process or a process that could be done with pencil and paper. See Synopsys, Inc. v. Mentor Graphics Corp. ,
Regardless of the particular analysis that is best suited to the specific facts at issue in a case, however, the Federal Circuit has emphasized that "the first step of the [ Alice ] inquiry is a meaningful one, i.e., ... a substantial class of claims are not directed to a patent-ineligible concept." Enfish ,
3. Alice Step Two-Evaluation of Abstract Claims for an Inventive Concept
A claim drawn to an abstract idea is not necessarily invalid if the claim's limitations-considered individually or as an ordered combination-serve to "transform
The U.S. Supreme Court has made clear that transforming an abstract idea to a patent-eligible application of the idea requires more than simply reciting the idea followed by "apply it."
Likewise, "[i]t is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea" where those components simply perform their "well-understood, routine, conventional" functions. In re TLI Commc'ns LLC ,
In addition, the U.S. Supreme Court explained in Bilski that "limiting an abstract idea to one field of use or adding token postsolution components [does] not make the concept patentable."
In addition, a "non-conventional and non-generic arrangement of known, conventional pieces" can amount to an inventive concept. BASCOM Glob. Internet Servs., Inc. v. AT & T Mobility LLC ,
4. Preemption
In addition to these principles, courts sometimes find it helpful to assess claims against the policy rationale for § 101. The U.S. Supreme Court has recognized that the "concern that undergirds [the] § 101 jurisprudence" is preemption. Alice ,
III. DISCUSSION
Defendant's motion to dismiss contends that the asserted claims of the patents-in-suit fall within the patent-ineligible "abstract ideas" exception to § 101. The Court applies the Alice framework described above to these claims. However, the Court need not individually analyze every claim if certain claims are representative. See generally Alice ,
First, the Court turns to the substantive Alice analysis of claim 1 of the '815 Patent, then to the substantive Alice analysis of claim 74 of the '005 Patent. Lastly, the Court discusses whether there are any factual allegations that preclude resolution of the instant motion under Federal Rule of Civil Procedure 12.
A. Alice Step One for Claim 1 of the '815 Patent -Whether the Claim is Directed to an Abstract Idea
Defendants argue that the asserted claims are directed to an abstract idea because: "(1) they are written in a form free of specific tangible implementation and merely invoke computers as a tool; (2) they are similar to claims found directed to abstract ideas in precedent from the Federal Circuit and district courts; (3) they are directed to functions that could be performed in the human mind or with pen and paper; (4) they are akin to long-standing human activity (switchboard operations; and (5) they are not directed to improving the functioning of a computer
Step one of the Alice framework directs the Court to assess "whether the claims at issue are directed to [an abstract idea]." Alice ,
The Court finds that claim 1 of the '815 Patent is directed to the abstract idea of routing a call based on characteristics of the caller and callee. Put in plain language, claim 1 discloses: (1) "receiving a caller identifier and a callee identifier" after a call is initiated; (2) "locating a caller dialing profile"; (3) matching the information in the "caller dialing profile" with information in the callee identifier; and (4) classifying the call either as a "public network call" or a "private network call" based on "classification criteria" and producing the appropriate public network or private network routing message to be received by a call controller. '815 Patent at 36:14-38. Claim 1 is abstract because first, it only discloses generalized steps to carry out generic functions, and second, because there are long-standing practices analogous to the claimed steps.
1. Claim 1 Discloses Generalized Steps to Carry Out Generic Functions
The Federal Circuit has recognized that "[g]eneralized steps to be performed on a computer using conventional computer aсtivity are abstract." RecogniCorp, LLC v. Nintendo Co., Ltd. ,
Contrary to TLI's arguments on appeal, the claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of conventional or generic technology in a nascent but well-known environment.... The specification does not describe a new telephone, a new server, or a new physical combination of the two. The specification fails to provide any technical details for the tangible components, but instead predominantly describes the system and methods in purely functional terms. For example, the "telephone unit" of the claims isdescribed as having "the standard features of a telephone unit" .... Likewise, the server is described simply in terms of performing generic computer functions such as storing, receiving, and extracting data.
Here, claim 1 is akin to the TLI patent claim. Claim 1 describes the purported invention in broad, generic, functional terms but fails to identify how those ends are achieved, with the specification being no clearer.
There is no doubt that the "caller identifier" and the "callee identifier" are generic. Indeed, the specification concedes that the invention did not invent the "caller identifier" or the "callee identifier." Specifically, the specification discloses that "[t]he caller identifier field may include а [publicly switched telephone network] number or a system subscriber username." '815 Patent at 17:13-15. Moreover, as examples of callee identifiers, the specification identifies "a callee telephone/videophone number." Id. at 14:49-50. Essentially, the caller and callee identifiers consist of either a telephone number or a username. Neither a telephone number nor a username can be considered unique to the '815 Patent, as the specification admits.
Claim 1 proceeds to claim "locating a caller dialing profile." Id. at 36:20-23. However, the claim itself vaguely defines caller dialing profile as "comprising a username associated with the caller and a plurality of calling attributes associated with the caller." Id. The specification makes clear that the '815 Patent did not invent the caller dialing profile, but rather, the caller dialing profile is comprised of various identificatory attributes of subscribers that are left undefined in the claim and specification. See, e.g. , id. at 18:1-4 ("Effectively the dialing profile is a record identifying calling attributes of the caller identified by the caller identifier. More generally, dialing profiles represent calling attributes of respective subscribers " (emphasis added).).
After "locating a caller dialing profile," claim 1 proceeds to claim matching the information in the caller dialing profile with information in the callee identifier. Id. at 36:23-25. As discussed above, the callee identifier is essentially "a callee telephone/videophone number," id. at 14:49-50, which the '815 Patent did not invent. The specification makes clear that this matching process is not unique to the Patent either, especially as the '815 Patent did not invent the callee identifier or any of the information associated with the matching process, such as an area code. See, e.g. , id. at 2:8-10 ("Using the call classification critеria may involve comparing calling attributes associated with the caller dialing profile with aspects of the callee identifier."); id. at 2:17-19 ("Comparing may involve determining whether the callee identifier includes a portion that matches an area code associated with the caller dialing profile."); id. at 2:20-22 ("Comparing may involve determining whether the callee identifier has a length within a range specified in the caller dialing profile.").
Finally, the call is either classified as a "public network call" or a "private network call" based on undefined "classification criteria," and the appropriate public network or private network routing message is sent to the call controller. Id. at 36:26-38. In essence, this step in claim 1 discloses classifying a call based on these "classification criteria," then sending a message based on that analysis. According to the specification, this process is as generically-implemented
Claim 1 is similar to other claims that courts have found to be abstract. In West View Research, LLC v. Audi AG , the Federal Circuit held that claims that "do not go beyond receiving or collecting data queries, analyzing the data query, retrieving and processing the information constituting a response to the initial data query, and generating a visual or audio response to the initial data query" were directed to the abstract idea of collecting and analyzing information.
Moreover, the claim does not provide for any specific implementation of the abstract idea. The claim does not specify, for instance, the content of the caller and callee identifiers, the technology that matches information in the caller dialing profile with information in the callee identifier, what network classification criteria are used to classify the call as a public network or a private network call, or how the classification is implemented. See Clarilogic, Inc. v. FormFree Holdings Corp. ,
Plaintiff argues that claim 1 does more than simply describe a function or outcome without describing how to achieve these results in a non-abstract way. Opp. at 11. Plaintiff then cites the specification to argue that the call controller sets up a call based on a routing message.
Plaintiff's argument is unconvincing. Alice 's step one inquiry must focus on the claim language. See, e.g. , Accenture Global Servs., GmbH v. Guidewire Software, Inc. ,
2. Long-Standing Practices are Analogous to Claim 1
More evidence of the claim's abstract nature lies in the Parus Holdings, Inc. v. Sallie Mae Bank court's decision.
The Parus Holdings court is not alone in holding that such call routing patent claims could be performed by humans. Likewise, in Telinit Techs., LLC v. Alteva, Inc. , the court found as abstract a claim requiring: "(1) receiving a data network request; (2) identifying a telephone number associated with that request; (3) signaling a switch to make a call; (4) monitoring the call; and (5) providing a user with notifications if there is a change in the status of the call."
Plaintiff attacks the analogy to a switchboard operator, arguing that unlike in claim 1, "switchboard routing used only the callee identifier (i.e. , telephone number) to identify, and route to, the destination (i.e. , callee) and did not need information about the caller." Opp. at 16. But even Plaintiff concedes that "telephone operators might have used a caller 's identity to properly attribute toll charges, or to record the caller's number for a call back in case the connection was lost."
Plaintiff also argues that "Defendants' assertion that the claims are directed to an abstract idea is even less plausible for means-plus-function claims such as the apparatus in Claim 28 of the '815 Patent." Opp. at 14. Plaintiff admits that "Claim 28 is similar to Claim 1," though there are differences in how each claim is interpreted bеcause claim 28 is a means-plus-function claim.
28. A call routing apparatus for facilitating communications between callers and callees in a system comprising a plurality of nodes with which callers and callees are associated, the apparatus comprising:
receiving means for receiving a caller identifier and a callee identifier, in response to initiation of a call by a calling subscriber;
means for locating a caller dialing profile comprising a username associated with the caller and a plurality of calling attributes associated with the caller;
means for determining a match when at least one of said calling attributes matches at least a portion of said callee identifier;
means for classifying the call as a public network call when said match meets public network classification criteria;
means for classifying a call as a private network call when said match meets private network classification criteria;
means for producing a private network routing message for receipt by a call controller, when the call is classified as a private network call, said private network routing message identifying an address, on the private network, associated with the callee; and
means for producing a public network routing message for receipt by a call controller, when the call is classified as a public network call, said public network routing message identifying a gateway to the public network.
'815 Patent at 38:53-39:12.
Plaintiff argues that claim 28 corresponds to the аlgorithms depicted in Figures 8A to 8D. Opp. at 14. The algorithms depicted in Figures 8A to 8D are carried out by the routing controller, discussed above. '815 Patent at 17:43-44 ("The [routing controller] message handler process is shown in greater detail ... in FIGS 8A through 8D."). However, the routing controller is implemented via generic computer means. As the specification admits, the routing controller "may be implemented as separate modules on a common computer system or by separate computers, for example." Id. at 13:13-14 (emphasis added). The specification lacks any additional detail as to whether these are specialized computers containing the routing controller. The routing controller circuit itself also contains only generic computer components: a processor, different types of memory, and an [input/output] port." Id. at 17:19-21. See, e.g. , SRI Int'l, Inc. v. Cisco Sys., Inc. ,
In sum, the Court finds that claim 1 of the '815 Patent is directed to an abstract idea. The Court next analyzes Alice step two.
B. Alice Step Two for Claim 1 of the '815 Patent -Whether the Claim Contains an Inventive Concept
Defendants argue that the limitations of Claim 1 are generic computer implementations
"In step two of the Alice inquiry, [the Court] search[es] for an 'inventive concept sufficient to transform the nature of the claim into a patent-eligible application.' " RecogniCorp ,
The Court finds that none of the claim's elements, assessed individually, provides an inventive concept. Claim 1 discloses: (1) "receiving a caller identifier and a callee identifier" after a call is initiated; (2) "locating a caller dialing profile"; (3) matching the information in the "caller dialing profile" with information in the callee identifier; and (4) classifying the call either as a "public network call" or a "private network call" based on "classification criteria" and producing the appropriate public network or private network routing message to be received by a call controller. '815 Patent at 36:14-38.
As discussed above, none of claim 1's elements are unique to the '815 Patent. In fact, the patent specification confirms that the '815 Patent did not invent the limitations found in claim 1.
For instance, the specification concedes that the invention did not invent the "caller identifier" or the "callee identifier." The specification discloses that "[t]he caller identifier field may include a [publicly switched telephone network] number or a system subscriber username." Id. at 17:13-15. Moreover, as examples of callee identifiers, the specification identifies "a callee telephone/videophone number." Id. at 14:49-50. Essentially, the caller and callee identifiers consist of either a telephone number or a username, neither of which is unique to the '815 Patent.
In addition, "locating a caller dialing profile" does not provide an inventive concept either. The specification makes clear that the '815 Patent did not invent the caller dialing profile, but rather, the caller dialing profile is comprised of various identificatory attributes of subscribers that are left undefined in the claim and specification. See, e.g. , id. at 18:1-4 ("Effectively the dialing profile is a record identifying calling attributes of the caller identified by the caller identifier. More generally, dialing profiles represent calling attributes of respective subscribers " (emphasis added).). Also, case law has held that locating information is not an inventive concept. In CyberSource Corp. v. Retail Decisions, Inc. , the Federal Circuit
Additionally, matching the information in the "caller dialing profile" with information in the callee identifier is likewise generic, as discussed above. The callee identifier is essentially "a callee teleрhone/videophone number." '815 Patent at 14:49-50. The specification makes clear that this matching process is not unique to the Patent either, especially as the '815 Patent did not invent the callee identifier or the process of matching the caller dialing profile with the callee identifier. See, e.g. , id. at 2:8-10 ("Using the call classification criteria may involve comparing calling attributes associated with the caller dialing profile with aspects of the callee identifier."); id. at 2:17-19 ("Comparing may involve determining whether the callee identifier includes a portion that matches an area code associated with the caller dialing profile."); id. at 2:20-22 ("Comparing may involve determining whether the callee identifier has a length within a range specified in the caller dialing profile.").
Moreover, case law has held that the process of matching information does not provide an inventive concept. In Intellectual Ventures I LLC v. Symantec Corp. , the method claim in question called for receiving data, determining whether the received data matched certain characteristics , and outputting data based on the determining step.
Furthermore, classifying the call either as a "public network call" or a "private network call" based on "classification criteria" and producing the appropriate public network or private network routing message to be received by a call controller does not provide an inventive concept either. Importantly, this process is performed on a generic computer, upon which the claimed step does not improve. The specification discloses that the super node, which includes the routing controller, "may be implemented as separate modules on a common computer system or by separate computers." '815 Patent at 13:10-14. Case law confirms that the process does not provide an inventive concept. In Accenture , the claim in question applied a set of rules to a database of tasks. Accenture ,
Thus, none of claim 1's elements, assessed individually, provides an inventive concept. Moreover, the ordered combination of these elements also does not yield an inventive concept. In BASCOM , the Federal Circuit held that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."
In Two-Way Media , the claim in question was directed to "first processing the data, then routing it, [and] controlling
Plaintiff cites to DDR Holdings , a case Plaintiff claims is analogous, for the proposition that "claims [that] solve problems necessarily rooted in network technology... are eligible" for a patent. Opp. at 23 (citing DDR Holdings ,
Therefore, claim 1 of the '815 Patent does not contain an inventive concept. The Court finds that at Alice step one, claim 1 of the '815 Patent is directed to an abstract idea. At Alice step two, there is no inventive concept sufficient to save the claim. Thus, the Court concludes that the multi-network claims-claims 1, 7, 12, 27, 28, 72, 73, 92, and 111 of the '815 Patent and claims 49 and 73 of the '005 Patent -of which claim 1 of the '815 Patent is representative, are patent-ineligible under § 101. Defendants' motion to dismiss the multi-network claims is therefore GRANTED.
C. Alice Step One for Claim 74 of the '005 Patent -Whether the Claim is Directed to an Abstract Idea
The arguments in Defendants' motion to dismiss and Plaintiff's opposition are identical as to both claim 1 of the '815 Patent and claim 74 of the '005 Patent. In fact, in Defendants' motion and Plaintiff's opposition, the § 101 analysis of claim 1 of the '815 Patent and claim 74 of the '005 Patent is combined.
Defendants argue that the asserted claims are directed to an abstract idea because: "(1) they are written in a form free of specific tangible implementation and merely invoke computers as a tool; (2) they are similar to claims found directed to abstract ideas in precedent from the Federal Circuit and district courts; (3) they are directed to functions that could be performed in the human mind or with pen and paper; (4) they are akin to long-standing
Step one of the Alice framework directs the Court to assess "whether the claims at issue are directed to [an abstract idea]." Alice ,
Like for claim 1 of the '815 Patent, the Court finds that claim 74 of the '005 Patent is directed to the abstract idea of routing a call based on characteristics of the caller and callee. Put in plain language, claim 74 discloses: (1) using a "participant identifier" to locate a "first participant profile" comprising of "attributes associated with the first participant," who starts a communication with a second participant; (2) sending a "first network routing message" that identifies an address in a first portion of the network for receipt by a controller when some information about the first participant and a portion of a "second participant identifier" meet a criterion; and (3) sending a "second network routing message" that identifies an address in a second portion of the network for receipt by a controller when some information about the first participant and a portion of the "second participant identifier" meet a second criterion. '005 Patent at 43:41-65. In essence, claim 74 of the '005 Patent is essentially the same as claim 1 of the '815 Patent, but with two routing messages being sent as opposed to just the one routing message being sent in claim 1 of the '815 Patent. For this reason, claim 74 of the '005 Patent suffers from the same defects as claim 1 of the '815 Patent. Claim 74 is abstract because first, it only discloses generalized steps to carry out generic functions, and second, because there are long-standing practices analogous to thе claimed steps.
1. Claim 74 Discloses Generalized Steps to Carry Out Generic Functions
For instance, as discussed above, the TLI court found that because the TLI patent failed to provide technical details for components, but instead described the system and methods "in purely functional terms," functions that were generic to a computer, the TLI patent claim failed step one of Alice. TLI ,
Thus, "participant identifiеr" is defined in the specification as "a [publicly switched telephone network] number or a system subscriber username." Id. at 17:23-24. The specification additionally identifies an identifier as "telephone/videophone number." Id. at 14:48-49. Essentially, an identifier consists of either a telephone number or a username. A telephone number or a username can hardly be considered unique to the '005 Patent, as the specification admits and as common sense dictates.
Likewise, the "first participant profile" of claim 74 is equally as generic. The specification never uses the phrase "participant profile," but the Court finds participant profile equivalent to the dialing profile discussed above in relation to the '815 Patent because the participant profile functions in the same way as the dialing profile. The participant profile comprises "a plurality of attributes associated with the ... participant," id. at 43:48-50, much like how a caller dialing profile comprises "a plurality of calling attributes associated with the caller," '815 Patent at 36:20-22. The specification makes clear that the '005 Patent did not invent the participant profile, but rather, the participant profile is comprised of various identificatory attributes of subscribers that are left undefined in the claim and specification. See, e.g. , '005 Patent at 18:10-13 ("Effectively the dialing profile is a record identifying calling attributes of the caller identified by the caller identifier. More generally, dialing profiles represent calling attributes of respective subscribers " (emphasis added).).
Then, claim 74 proceeds to claim, without further detail, starting a communication between a first participant and a second participant. Id. at 43:46-47. The process of initiating a communication is described in the specification as using a generic computer with a routing controllеr to connect two parties. The specification discloses that the super node, which includes the routing controller that routes communications, "may be implemented as separate modules on a common computer system or by separate computers, for example." Id. at 13:21-22.
In the next step of claim 74, claim 74 claims sending a "first network routing message" that identifies an address in a first portion of the network for receipt by a controller when some information about the first participant and a portion of a "second participant identifier" meet a criterion. As discussed above, a routing message
The final step of claim 74 claims sending a "second network routing message" that identifies an address in a second portion of the network for receipt by a controller when some information about the first participant and a portion of the "second participant identifier" meet a second criterion. This final step is near-identical to the above-described step, the differences being that a "second network routing message" is sent when another criterion is met by information about the first participant and a portion of a "second participant identifier." As the Court has discussed at length, the process of sending a network routing message is not unique to the Patent, and is implemented using generic computers.
2. Long-Standing Practices are Analogous to Claim 74
As claim 74 is quite similar to claim 1 of the '815 Patent, Parus Holdings again confirms the claim's abstract nature.
The Parus Holdings court is not alone in holding that such call routing patent claims could be performed by humans. Likewise, in Telinit , the court found as abstract a claim requiring: "(1) receiving a data network request; (2) identifying a telephone number associated with that request; (3) signaling a switch to make a call; (4) monitoring the call; and (5) providing a user with notifications if there is a change in the status of the call."
Therefore, the Court finds that claim 74 of the '005 Patent is directed to an abstract idea.
D. Alice Step Two for Claim 74 of the '005 Patent -Whether the Claim Contains an Inventive Concept
Defendants argue that claim 74 contains "only well-known, routine, and conventional functionality that does not amount to significantly more than the abstract idea itself." Mot. at 20. Plaintiff responds by arguing that the claim recites "a specially programmed routing controller to provide call placement and routing in an individually customizable manner for each caller," a controller that was unconventional at the time of the invention. Opp. at 18.
As aforementioned, in "step two of the Alice inquiry, [the Court] search[es] for an 'inventive concept sufficient to transform the nature of the claim into a patent-eligible application.' " RecogniCorp ,
The Court finds that none of the claim's elements, assessed individually, provides an inventive concept. Claim 74 recites: (1) using a "participant identifier" to locate a "first participant profile" comprising of "attributes associated with the first participant," who starts a communication with a second participant; (2) sending a "first network routing message" that identifies an address in a first portion of the network for receipt by a controller when some information about the first participant and a portion of a "second participant identifier" meet a criterion; and (3) sending a "second network routing message" that identifies an address in a second portion of the network for receipt by a controller when some information about the first participant and a portion of the "second participant identifier" meet a second criterion. '005 Patent at 43:41-65.
As discussed above, none of claim 74's elements are unique to the '005 Patent. In fact, the patent specification confirms that the '005 Patent did not invent the limitations found in claim 1.
First, using a "participant identifier" to locate a "first participant profile" comprising of "attributes associated with the first participant," who starts a communication with a second participant is not an inventive concept. For instance, "participant identifier" is defined in the specification as "a [publicly switched telephone network] number or a system subscriber username." Id. at 17:23-24. The specification additionally identifies an identifier as "telephone/videophone number." Id. at 14:48-49. At bottom, an identifier consists of either a telephone number or a username.
Moreover, sending a "network routing message" that identifies an address in a portion of the network for receipt by a controller when some information about the first participant and a portion of a "second participant identifier" meet a criterion is also not inventive. This process is analogous to a claim found in Intellectual Ventures I. In Intellectual Ventures I , the claim in question called for determining whether the received data matched certain characteristics and outputting data based on the determining step.
Thus, none of claim 74's elements, assessed individually, provides an inventive concept. Furthermore, the ordered combination of these elements also does not yield an inventive concept. In BASCOM , the Federal Circuit held that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."
In Two-Way Media , the claim in question was directed to "first processing the data, then routing it, [and] controlling it...."
Therefore, claim 74 of the '005 Patent does not contain an inventive concept. The Court finds that at Alice step one, claim 74 of the '005 Patent is dirеcted to an abstract idea. At Alice step two, there is no inventive concept sufficient to save the claim. Thus, the Court concludes that the single-network claims-claims 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the '005 Patent -of which claim 74 of the '005 Patent is representative, are patent-ineligible under § 101. Defendants' motion to dismiss the single-network claims is therefore GRANTED.
E. Whether there Exist Factual Questions that Preclude Resolution of the Instant Motion under Rule 12
Plaintiff's opposition cites disclosures in the complaints that Plaintiffs argue preclude resolution of the instant motion under Rule 12. Opp. at 7. In particular, Plaintiff's opposition mentions two specific features-user-specific calling and transparent routing-disclosed by the complaints that purportedly demonstrate that the asserted claims are not directed to abstract ideas.
First, Plaintiff argues that claim 1 discloses "user-specific calling," which precludes a finding of abstractness because in user-specific calling, "[d]ifferent callers with differently configured attributes could dial the same string of digits to reach different destinations because the meaning of the callee identifier is different based on each caller's attributes." Opp. at 7-8 (emphasis in original). Plaintiff cites the '815 Patent specification to show that user-specific calling exists because the Patent describes "calling attributes associated with the caller" to evaluate a "callee identifier" to identify the callee.
However, the '815 Patent's claim language contains no mention of these alleged benefits of user-specific calling, such as supporting local public switched telephone network telephone number styles or unconventional styles of calling regardless of where a caller is located. After all, Alice 's step one inquiry must focus on the claim language . See, e.g. , Accenture ,
Second, Plaintiff also argues that the asserted claims disclose "transparent routing," rendering the claims non-abstract. Opp. at 8. Plaintiff asserts that the "improved call routing controller, system and method of the claim invention also enables using a caller's attributes to evaluate a callee identifier against network routing criteria to cause a call to automatically be routed over system network ... or another network interconnected to the system network via a gateway ... transparently to the user -without the user manually specifying the network to use for routing
However, as aforementioned, Alice 's step one inquiry must focus on the claim language. See, e.g. , Accenture ,
At bottom, under Federal Circuit law, "[w]hether a claim recites patent eligible subject matter is a question of law which ... has in many cases been resolved on motions to dismiss or summary judgment." Berkheimer v. HP Inc. ,
IV. CONCLUSION
For the foregoing reasons, the Court finds that the asserted multi-network claims (claims 1, 7, 12, 27, 28, 72, 73, 92, and 111 of the '815 Patent and claims 49 and 73 of the '005 Patent ) and the asserted single-network claims (claims 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the '005 Patent ) are directed to unpatentable subject matter and are thus invalid under
IT IS SO ORDERED.
Notes
The Patents refer to "callee" to mean the recipient of a call. The Court adopts the Patents' term of art and will use "callee" to refer to a call recipient.
Claims 1, 7, 12, 27, 28, 72, 73, 92, and 111 of the '815 Patent and claims 49 and 73 of the '005 Patent.
Claims 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the '005 Patent.
As an exhibit to the opposition, Plaintiff attached the Declaration of William Mangione-Smith, an expert, in support of Plaintiff's response to Apple's IPR petition. ECF No. 76-5 ("Mangione-Smith Declaration"). Plaintiff does not request judicial notice of the Mangione-Smith Declaration. The Court will not consider the Mangione-Smith Declaration as part of its analysis because the Declaration is extrinsic to the complaints and Patents. See, e.g. , Evolutionary Intelligence, LLC v. Sprint Nextel Corp. ,
One court has noted that, like all tools of analysis, the "pencil and paper" analogy must not be unthinkingly applied. See Cal. Inst. of Tech. v. Hughes Commc'ns Inc. ,
Defendants request judicial notice of a YouTube video about 1940s telephone technology. Reply at 9 n.3. The Court may take judicial notice of matters that are either "generally known within the trial court's territorial jurisdiction" or "can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned." Fed. R. Evid. 201(b). However, to the extent any facts in materials subject to judicial notice are subject to reasonable dispute, the Court will not take judicial notice of those facts. Lee v. City of Los Angeles ,
For this reason, the Court rejects Plaintiff's alternative argument that the motion is premature. Opp. at 25. The asserted claims contain only generic elements, as confirmed by the Patents' specification. Thus, dismissal at this stage of litigation is entirely appropriate. The Court need not consider additional evidence to come to its conclusion.