By Joseph Herndon --
Genband US LLC sued Metaswitch for infringement of claims of U.S. Patent No. 6,772,210 ("the '210 Patent") and U.S. Patent No 7,047,561 ("the '561 Patent") in the U.S. District Court for the Eastern District of Texas (Marshall Division), each of which arguably includes software patent claims. On January 6, 2016, the District Court denied a Motion for Summary Judgment filed by Metaswitch that asserted claims of the '210 Patent and the '561 Patent are invalid under 35 U.S.C. § 101 for failure to claim patent-eligible subject matter. The District Court's decision found that claims of both patents recite patent-eligible subject matter.
The District Court followed the now traditional two-step test for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. The first step requires a court to determine if the claims are directed to a law of nature, natural phenomenon, or abstract idea. If not, the claims pass muster under § 101. The second step is applied only if the court finds in the first step that the claims are directed to a law of nature, natural phenomenon, or abstract idea. The second step requires the court to determine if the elements of the claim individually, or as an ordered combination, transform the nature of the claim into a patent-eligible application. This second step has come to be known as a search for an "inventive concept".
The '210 Patent
The '210 Patent is entitled "Method and Apparatus for Exchanging Communications Between Telephone Number Based Devices in an Internet Protocol Environment." Claim 1 is reproduced here:
1. In an Internet Protocol (IP) communication system having a first network coupled to a second network through a gateway, wherein the first network and the second network are both IP networks, 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 method comprising:
allocating a second address for the first telephone number based device for use in the second network; and
performing address translation on communication messages so that the first address for the first telephone number based device is used in the first network and the second address for the first telephone number based device is used in the second network.
After analyzing the preamble of claim 1 and determining that it was abundantly clear that the preamble of claim 1 is limiting and required to be considered for patentability, the District Court worked through the two-part subject matter eligibility test.
The Defendant Metaswitch argued that the claims of the '210 Patent were invalid because they are directed to an abstract idea of "allocating" (or mapping) an address within a communication message to another address and then performing "address translation" on the message without any reference to material (i.e., physical) objects. Metaswitch contended that this is mere manipulation of binary data within abstractions called IP packets.
The District Court first noted that the fact that a claim involves the manipulation of binary data does not inherently render it abstract. If that were the case, no claim drawn to data processing on a digital device could ever survive § 101. The important question is whether the claimed "manipulation of binary data" is merely a computerized implementation of an abstract concept.
The District Court further noted that the law does not support a rule that the presence or absence of "concrete or material objects" defines the boundary between eligible and ineligible subject matter.
Looking at claim 1 of the '210 Patent, the District Court found that it was not directed to an abstract idea. The District Court found that claim 1 is directed 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). The utility associated with the claimed method is specific to the context recited in the claims -- the need to translate message addresses between two different IP networks containing two different telephone number based devices.
In addition, the District Court noted that the claims of the '210 Patent, like the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., address a problem "specifically arising in computer networks." The District Court further stated that the claim recites a first and second "telephone number based device" operating in two different connected "IP networks," and the claim delimits the context in which the two claimed addresses are used. This reasoning was used by the District Court to conclude that claim 1 is implemented in the context of a non-generic computer system, and "improve[s] the functioning of the computer itself."
The '561 Patent
The '561 Patent, is entitled "Firewall for Real-Time Internet Applications." Claim 12 is reproduced here:
12. A method of 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, the method comprising the steps of:
i. receiving a stream of Internet protocol packets
ii. applying the Internet protocol packets associated with the signaling channel and the control channel to an application proxy, and
iii. applying the Internet protocol packets associated with the bearer channel to a packet filter.
Here, the Defendant Metaswitch contended that claim 12 is invalid because it is directed to the abstract idea of classifying packets based on their channel (bearer, signaling, or control) and then applying the packets to one of two abstract components (either an application proxy or packet filter) of a firewall.
As with the '210 Patent, the District Court found that claim 12 of the '561 Patent was not directed to an abstract idea. The District Court found that claim 12 of the '561 Patent attempts to "overcome a problem specifically arising in the realm of computer networks" and recites a specific type of data structure unique to a specific class of computer networks (i.e., Internet protocol packets formatted in accordance with a real-time Internet protocol) that requires the packets be associated with one of three types of network channels, and also requires that the packets be applied to a different firewall component depending on packet type.
The District Court noted that the recited operations in claim 12 are meaningless outside the context of a computer network using specific types of data packets and specific channels defined by particular protocols.
Interestingly, the District Court noted that even though the claim terms "an application proxy" and "a packet filter" are broad types or classes of firewall components that do not recite or connote any specific structure, the claims still satisfy section 101. The District Court noted an odd hypothetical claim limitation that could be directed to "a cup" might encompass an extensive class of objects of varying shapes, sizes, materials, and functions (a coffee mug, a champagne flute, a disposable paper cup), and thus the word "cup" is abstract in the sense that it spans many different structures. But a cup is not an "abstract idea" in the sense meant by Alice, and neither are the "application proxy" and "packet filter" components recited in the claims. The reasoning supplied for this conclusion is that these components are not "building blocks of human ingenuity," "a method of organizing human activity," a "fundamental truth," an "idea of itself," or the like. The "application proxy" and "packet filter" terms refer to specific components that have been construed to perform specific functions within a network.
The District Court strengthened its conclusion by noting that the language of claim 12 also recites "significantly more," rendering it patent eligible. The significantly more is found in that Claim 12 of the '561 Patent is implemented in the context of a specific, non-generic computer system, and "improve[s] the functioning of the computer itself."
With these two patents, the District Court seemed to have in mind that the claims should be held to satisfy section 101, and then forced the conclusion through somewhat of a conclusory opinion. Most helpful to the claims was likely that they are necessarily rooted in computer technology, and arguably would improve functioning of computer networks within some examples, and thus, these claims should be found to satisfy section 101.