Telephone Call Processing Patent Claims Found Invalid under 35 U.S.C. § 101

In the United States District Court for the District of Delaware, Plaintiff filed a declaratory judgment action on seeking a declaration that none of Plaintiff's accused products infringed any valid claims of Defendant's U.S. Patent Nos. 8,351,591 and 7,822,188, and further that one or more claims of those patents were invalid under 35 U.S.C. § 101.

The '591 and '188 patents share a common specification and generally relate to "systems and methods for processing and placing telephone calls."  The parties separate the asserted claims into two categories:  the sequential dialing claims and the single number outcall claims.  Generally, the patents are directed to flexible call processing systems.  In one example, an inbound call intended for a called party can be rerouted based on whether the call is successfully connected or not.  The methods for rerouting include the sequential dialing or single number outcall methods.

A.  Sequential Dialing Claims

Claim 40 of the '188 patent is an independent claim and is representative of the sequential dialing claims.  It reads as follows:

40.  A method of processing calls, comprising:
    receiving at a call processing system a message from an Internet protocol proxy regarding a first call from a caller;
    determining if the first call is directed to a telephone address of a subscriber of services offered by the call processing system, wherein at least partly in response to determining that the telephone address is that of a subscriber:
    accessing an account record associated with the subscriber, the account record including at least one subscriber instruction;
based at least in part on the subscriber instruction, placing a first outcall to a first communication device associated with the subscriber;
    if the first outcall is not answered within a first number of rings or period of time, placing a second outcall to a second communication device associated with the subscriber; and
    receiving a call connect instruction from the subscriber; and
    instructing the call processing system to connect the first call to a third communication device.

Abstract Idea

The analysis under 35 U.S.C. § 101 first requires determination of whether the claims at issue are directed to an abstract idea.

Plaintiff argued that the claims are like the concept of sending, receiving, and managing information between a subscriber and a network, and as such, are directed to the abstract idea of sequentially dialing a list of telephone numbers.

Plaintiff also asserted that the sequential dialing claims provide no improvement to any computer or technological process; instead, they merely access a list of telephone numbers in a database associated with the called party and sequentially dial them in the ordinary fashion, providing simple automation of a task previously performed manually.

All of Plaintiff's arguments centered around comparing the claims of the patents to claims previously held to be patent ineligible in other cases.

Defendant countered that Plaintiff's analogy oversimplified the sequential dialing claims.  According to Defendant, the problem addressed by the invention is redirecting the call to another number associated with the subscriber without hanging up and redialing after receipt of a busy signal from one of the subscriber's phone numbers.  Defendant further argued that the claims are not abstract because humans have not practiced and cannot practice the claims:  a conventional operator cannot redirect a call in a situation where the caller does not know the called party's other phone numbers.

The Court agreed with Plaintiff that claims are directed to an abstract idea.  Like Plaintiff, the Court simplified the claim into functions that can be considered directed to organizing human activity:  accessing stored information when prompted by a user's incoming call, and executing an automated response according to stored instructions provided in advance by a subscriber.

The Court noted that the '188 patent describes the problem addressed by the claims as callers receiving busy signals or getting sent to voicemail instead of successfully connecting with the called party.  Thus, the Court found that the "problem" addressed by the claims is a human unavailability problem, rather than a problem specific to telephony technology.  As a result, the claims were not found to improve telephony technology, and instead invoked known telephony technology merely as a tool to address this human unavailability problem.

Inventive Concept

The determination that a patent is directed to an abstract idea does not render the subject matter ineligible.  Having decided that the patent's claims are directed to an abstract idea, the Court must next determine whether the claims do significantly more than simply describe the abstract method so as to involve an inventive concept.

Plaintiff argued that the claims lack an inventive concept because the claims merely implement the idea of sequential dialing in the context of computer telephony and recite only conventional telephony elements.

Defendant again complained that Plaintiff improperly oversimplified each limitation in the claims and failed to consider each claim as a whole.  Defendant asserted that an inventive concept exists because the patent contemplates employing a select set of timing rules for the length that the first outcall is permitted to go unanswered before placing the second outcall.

The Court found, however, that the rules here merely require initiating a second outcall after a preset number of rings or period of time.  Here, unlike McRo, no rule derivation is required, and the rules are not directed to a complex interaction.  The Court found nothing inventive about using a preset amount of time to determine when to initiate a particular step in a process, and it is difficult to imagine using in this system alternative rules not based on the passage of some period of time.

Further, the Court found that the rules recited here do not represent an improvement to telephony technology.  The Court rejected all of Defendant's arguments, and found that the claims of the '188 patent are drawn to an abstract idea and do not provide an inventive concept.  Thus, the claims were found to be patent ineligible under 35 U.S.C. § 101.

B.  Single Number Outcall Claims

Claim 1 of the '591 patent is representative of the single number outcall claims, and it reads as follows:

1.  A method of processing calls, the method comprising:
    storing in computer readable memory associated with a call processing system a first phone address associated with a first subscriber;
    storing in computer readable memory a plurality of phone addresses for the first subscriber;
    participating at the call processing system in a first call associated with the first subscriber, the first call associated with a second phone address different than the first phone address;
    placing a first outcall from the call processing system to a first called party, wherein the call processing system inserts at least a portion of the first phone address in a callerID field associated with signaling information associated with the first outcall;
    causing the first call and the first outcall to be bridged;
    participating at the call processing system in a second call associated with the first subscriber, the second call involving a subscriber communication device associated with a third phone address different than the first phone address placing a second outcall from the call processing system to a second called party, wherein the call processing system inserts at least a portion of the first phone address in a callerID field associated with signaling information associated with the second outcall; and
    causing the second call and the second outcall to be bridged.

Abstract Idea

Plaintiff argued that the asserted single number outcall claims are directed to the abstract idea of identifying a caller with a single telephone number.  Plaintiff asserted that the claims do not improve telephony technology; instead, the claims merely store information (i.e., telephone addresses), categorize that information (i.e., associate the telephone addresses with particular subscribers), and then transmit the information (i.e., insert the telephone address into a callerID field).

Plaintiff also asserted that the abstract concept to which the claims are directed has been practiced for decades because a call involving an assistant located in an office who connects an employee working from home with a third party would display a number for the office, rather than the employee's home phone number, in the callerID field.  In this scenario, although the employee would initiate the call from a home phone address (the second phone address), the callerID field would display the office phone address (the first phone address), not the employee's home phone address when the employee was connected to the called party.

The Court agreed with Plaintiff that the asserted single number outcall claims are directed to an abstract idea.  The Court found that essentially, the claim is directed to storing data in a database, looking up data from that database in response to the initiation of a phone call, and inserting at least a portion of that data in the already-existing callerID field.

The claims do not focus on a specific means or method that improves the relevant technology but are instead directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery.

Inventive Concept

Plaintiff argued that the single number outcall claims lack an inventive concept because the claim scope is not limited to anything narrower than identifying a caller with a single telephone number.  Plaintiff further contended that the claims merely implement this abstract idea using generic and conventional components and operations.

For the same reasons discussed with respect to the sequential dialing claims, the Court agreed with Plaintiff that the call processing system fails to provide an inventive concept for the single number outcall claims.

Defendant admitted during oral argument that the hardware that was utilized in the patent claims was known at the time, but asserted that what was new was combining those known hardware elements together through programming in a new way.  But rather than disclosing a detailed program to achieve the claimed functionality, the patents simply append conventional steps, specified at a high level of generality, which is not enough to supply an inventive concept.

Thus, the Court found that the single number outcall claims are directed to an abstract idea and do not provide an inventive concept.  Thus, the claims were found to be patent ineligible under 35 U.S.C. § 101.

Looking at the outcome here, most of Plaintiff's arguments centered around comparing the claims of the patents to claims previously held to be patent ineligible in other cases.  This can be a high burden to overcome for the Defendant because now the Defendant must either demonstrate that the claims are unlike those previously found invalid, or demonstrate that the claims previously found invalid were done so improperly.  This brings up a problematic issue because a Court is unlikely to consider previous cases to have been decided improperly.  As a result, once a case is decided finding claims to be patent ineligible under 35 U.S.C. § 101, those claims now are examples to use for all future section 101 challenges.

As with many of the patent ineligible decisions, many other additional arguments were focused on demonstrating that the claims are directed to old technology, or as stated here, to technology that "has been practiced for decades".  Of course, if that is the case, the proper validity challenge should arise under section 102 or 103 to invalidate the claims based on prior art.  I still cannot agree that a patent eligibility issue has anything to do with whether the claims recite new/novel features.

Memorandum Opinion by Richard G. Andrews, U.S. District Judge