By Michael Borella --
Voxathon sued Alpine, and a number of defendants that manufacture automobiles, for infringement of U.S. Patent No. 6,442,261. According to the Court, the patent "relates to computer-implemented systems and methods for transferring information efficiently." Specifically, claim 1 recites:
A method for recovering calls using an attendant telephone set having a predetermined number of call appearance buttons comprising:
receiving a plurality of incoming telephone calls from calling parties;
identifying a telephone number of the calling party of each incoming telephone call;
assigning each incoming telephone call to a next available call appearance button of said predetermined number of call appearance buttons;
storing the identified telephone number associated with each incoming telephone call in a memory device; and
automatically redialing, in response to the attendant's selection of one of the call appearance buttons, the stored telephone number of the calling party of the incoming call assigned to the selected call appearance button.
The defendants filed multiple 12(b)(6) motions to dismiss the case on the grounds that the claims of the '261 patent lack subject matter eligibility under 35 U.S.C. § 101. The Court found that there were no material factual disputes that prevented it from evaluating these motions on the pleadings. Despite Voxathon arguing that the defendants had misconstrued or disregarded several claim terms, the Court stated that construction of these terms would not change the substantive § 101 analysis. Citing to the precedential Federal Circuit case of Bancorp Servs., L.L.C. v. Sun Life. Assur. Co. of Canada, the Court stated that it was not required to wait until after claim construction to make a § 101 determination.
That out of the way, the Court reviewed the two-prong test for patent-eligibility under § 101 set forth in Alice Corp. v. CLS Bank Int'l. First, one must determine whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to something more than the judicial exception. Notably, generic computer implementation of an otherwise abstract process does not qualify as "something more."
Applying the first prong, the Court characterized the claim as "directed to the abstract idea of responding to a sender of a message." Despite explicit recitation of "a telephone set" and "call appearance buttons," the Court made an analogy between the claimed invention and a manual procedure that could be carried out by a human. Particularly, the Court wrote that "[w]hether a message is received through a telephone or a letter, the steps of receiving a message, identifying the sender of the message, remembering the address or phone number of the sender of the message, and responding to the sender of a message remain the same."
Voxathon argued that the claims disclosed an improved telephone set that solved problems in the prior art related to telephone calls going unanswered. The Court rejected this notion, stating that any such new device "merely performs the abstract idea of responding to the sender of a message." Looking to the claims found ineligible in Planet Bingo, LLC v. VKGS LLC and Content Extraction and Transmission LLC v. Wells Fargo Bank, National Ass'n, the Court concluded that the '261 patent similarly included steps of "1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory," and that the recalling step did not make a significant difference.
Turning to the second prong, Voxathon used an expert declaration in an attempt to establish that the claim contains "several material, non-generic limitations." The Court, however, rejected the declaration as being "inadequate" without explaining why. (Apparently, this declaration did not raise a material issue of fact that prevented the Court from ruling on the 12(b)(6) motion.) Instead, the Court stated that "the '261 patent simply automates an abstract idea -- responding to the sender of a message -- albeit through the use of a 'telephone set,'" and that "[a] generic computer can perform the same conventional and routine steps as the 'telephone set.'"
Voxathon further argued that the claimed invention "eliminates errors associated with the process of receiving and redialing a phone number." But the Court found this notion unavailing, because even "[t]hough a computer may be more efficient or less error-prone than a human, mere automation through a generic computer is not enough to render a patent eligible under § 101." Finally, Voxathon noted that the claim's preemption is "narrow and not absolute." Once again, the Court was unconvinced, and noted that the absence of compete preemption does not demonstrate patent-eligibility, and that the claim is effectively a monopoly over the aforementioned abstract idea.
Consequently, the '261 patent was held to be invalid under § 101, and the case was dismissed.
This is yet another example that tracks a familiar trend in § 101 jurisprudence: (1) a claim is viewed at a 10,000 foot level to remove from it all devices and machines, (2) this gist of the claim is declared abstract, and (3) when the devices and machines are examined separately from this gist of the claim, they are determined to be no more than routine and conventional, adding no patentable weight. Following such a formula, virtually any software or business method claim can be rendered invalid.
And therein lays the fundamental problem with the Alice test -- its subjectivity. While many claims that fail to meet the requirements of § 101 are more clearly abstract than claim 1 of the '261 patent, a reasonable application of the test to this claim -- one that considered the claim as a whole or involved defining claim terms -- might have come to the opposite conclusion.