The Software IP Report

Yet Another Business Method Patent Fails Section 101 “Abstract Idea” Test

By Charles Bieneman

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

Yet another court has held yet more business method patents invalid for failing to recite patent-eligible subject matter under 35 U.S.C. § 101. In Open Text S.A. v. Alfresco Software Ltd., No. No. 13-cv-04843-JD (Sept 19, 2014), the court granted the defendant’s Rule 12(b)(6) motion to dismiss, holding that claims of U.S. Patent Nos. 7,647,372 and 7,975,007 were invalid under Section 101. Both patents are entitled “Method and System for Facilitating Marketing Dialogues,” which at this point perhaps tells the Section 101 cognoscenti all they need to know.

And if the patents’ titles do not suffice for telegraphing the outcome of this case, consider the court’s summary:

The patents purport to describe an invention that allows a marketer to “communicate with potentially large numbers of customers (or potential customers, or other participants receiving a communication), where communications may involve waiting for, or receiving responses to, communications, and sending subsequent communications (or taking other actions) that depend, for example, on the responses, information known (or surmised) about an individual participant or any number of other factors.” . . . Translated into plainer English, the patents simply describe a form of the concept of interacting with customers for marketing purposes. To that end, the patents describe a method to gain marketing [6] feedback: a group of people is initially communicated with, a subset of that group is selected, and then an action is performed with the subset. For example, a sample of customers is asked “How was your order?” A communication is then sent to those customers who respond “Bad” and a “Thank You” message is sent to those customers who respond “Great.”

The parties in the case had not requested claim construction, and the court noted that Section 101 invalidity could often be determined at the pleading stage and prior to claim construction. The claims here were directed to an abstract idea, reciting “a very simple computer-driven method to engage in the commonplace and time-honored practice of interacting with customers to promote marketing and sales.” Moreover, the claims did not “transform the abstract idea into a patent-eligible invention,” instead simply “implement[ing] the basic marketing scheme on a generic computer system without any meaningful limitations.”