The Software IP Report
Section 101 Analysis Under Alice Reaches Different Results in Different Texas Districts
By Charles Bieneman
Categories: Patent Eligibility, The Software IP Report
Courts in the Eastern and Western Districts of Texas have recently reached decisions that demonstrate the different results that different courts can reach when analyzing patent-eligibility under 35 U.S.C. § 101 in the wake of Alice Corp. v. CLS Bank.
Summary judgement of invalidity under 35 U.S.C. 101 was denied on claims of U.S. 6,772,210 and 7,047,561. Genband US LLC v. Metaswitch Networks Corp., No. 2-14-cv-00033 (ED Tex.January 6, 2016). The claims of the ‘210 patent were directed to “a method for exchanging communication messages between a first telephone number based device in the first network and a second telephone number based device in the second network, the first telephone number based device having a first address for use in the first network.” The claims of the ‘561 patent were directed to “protecting a computer network transmitting and receiving Internet protocol packets formatted in accordance with a real-time Internet protocol, each of said Internet protocol packets being associated with any one of a signaling channel, a control channel, or a bearer channel.” Magistrate Judge Payne found that claim 1 of the ‘210 patent was directed not to an abstract idea, but “to a specific set of operations (“allocating a second address” and “performing address translation”) which are confined to a particular context (two different telephone number based devices in two different networks using two different addresses, connected by a gateway).” Claim 12 of the ‘561 patent was likewise directed not to an abstract idea to but “specific components that have been construed to perform specific functions within a network.”
Summary judgment of invalidity was likewise denied concerning claims of U.S. Patent No. 8,285,678, directed to “a method for providing automatic version control to a business intelligence system.” Motio, Inc. v. BSP Software LLC, No. 4-12-cv-00647 (TXED January 4, 2016). The instant summary judgment motion revived arguments raised in a Rule 12(c) Motion for Judgment on the Pleadings. The claims were “directed toward the abstract concept of maintaining versions of electronic documents.” However, citing DDR Holdings, LLC v. Hotels.com, L.P., 733 F.3d 1245, 1249 (Fed. Cir. 2014), the court found that the claims recited significantly more than the abstract idea by “addressing a problem specific to the realm of computers.” Specifically, “using an ‘automated agent’ distinct from a business intelligence system to improve the functionality of a business intelligence system” was “a particular method of providing one type of version control that does not preempt every application of the idea of maintaining versions of electronic documents or even all methods of version control in a business intelligence system.”
In contrast, Magistrate Judge Manske in the Western District of Texas recommended granting a motion to dimiss with respect to U.S. Patent No. 7,631,079. Network Apparel Group, LP v. Airwave Networks Inc., No. 6-15-cv-00134 (WD Texas Dec. 30, 2015). Claims of the ‘079 patent are directed to “managing messaging on a limited-area network.” The court found that “the purpose of the ‘079 Patent is to incentivize an end user to acknowledge the receipt of a message and that such purpose is a well-known, longstanding, commercial business practice,” and therefore, “as a matter of law that the claims of the ‘079 Patent are directed to an abstract idea.” The claims otherwise recited only “activities and devices” that were well known and conventional, and therefore did not add an inventive concept to the abstract idea.