The Software IP Report

Claims to Devices Sharing GPS Addresses Not Patent-Eligible in E.D. Texas

By Charles Bieneman

Categories: Patent Eligibility, Software Patents, The Software IP Report

Patent claims drawn to “entering location information into a positional information device” were held patent-ineligible under 35 U.S.C. § 101 in Rothschild Location Technologies LLC v. Geotab USA, Inc., 6:15-cv-682-RWS-JDL (E.D. Texas May 16, 2016).  Judge Schroeder upheld the report and recommendation of Magistrate Judge John D. Love, in which Judge Love recommended granting a Rule 12(b)(6) motion to dismiss because U.S. Patent No. 8,606,503 was directed to patent-ineligible subject matter.

Claim 1 of the ’503 patent recites:

A method for entering location information into a positional information device, the method comprising:

receiving, by a server, a request from a first positional information device for at least one address stored in at least one second positional information device, the request including a first identifier of the first positional information device;

determining, by the server, a second identifier for identifying the at least one second positional information device based on the received first identifier;

retrieving, by the server, the requested at least one address stored in the identified at least one second positional information device; and

transmitting, by the server, the retrieved at least one address to the first positional information device.

Judge Schroeder began by explaining that the magistrate judge was correct to decide the patent-eligibility question at the pleadings stage.  The plaintiff had objected to the court’s refusal to consider its expert’s declarations, which were outside the pleadings.  However, the magistrate properly relied on the plain language of the patent claims, and the plaintiff’s own description of the claimed subject matter.  The expert’s declarations were not material to patent-eligibility and failed to provide adequate basis for their conclusions.  Where “patent claims on their face are plainly directed to an abstract idea,” a dismissal at the pleadings stage was appropriate.

Moreover, Magistrate Judge Love properly “found that the ’503 Patent is directed toward the abstract idea of address retrieval.”  The plaintiff argued that the magistrate judge had improperly used the “machine-or-transformation” test.  Instead, Judge Schroeder explained, the magistrate judge had simply found that each of the problems the ’503 patent purported to solve “simply relate[s] to ease, accuracy, and efficiency benefits achieved when any fundamental or well-known concept is implemented on a computer device.”

Finally, addressing the second prong of the Alice/Mayo test, the claims recited no inventive concept.  The plaintiff had essentially argued that “that the ‘503 Patent is inventive because it requires specialized hardware and software, and is limited to a specific type of data.”  However, as the magistrate judge found, “a GPS device performing generic computer tasks does not transform the claims into patent-eligible subject matter.”