Electronic Delivery of Messages Equated to U.S. Post Office Services
On May 12, the U.S. District Court for the Northern District of Texas issued an Order in a case captioned Mobile Telecommunications Technologies, LLC v. Blackberry Corp. involving BlackBerry's motion for Summary Judgment that asserted claims of U.S. Patent Nos. 5,809,428 and 5,894,506 are invalid under 35 U.S.C. § 101.
More specifically, BlackBerry argued that claims 1 and 8 of the '428 Patent are directed to the abstract idea of sending and storing messages, and claim 8 of the '506 Patent is directed to the abstract idea of coded communication. The District Court agreed, and equated the claims to delivering a package by a postal courier, and sending coded messages between soldiers in a battlefield. The District Court's reasoning seems a bit far-fetched, but the outcome is not too surprising given the current state of U.S. patent law with respect to software claims and patent eligibility.
The District Court applied the two-step test set for in Alice to first determine whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea. If so, the court then determines whether the additional elements transform the nature of the claim into a patent-eligible application.
Abstract Ideas
Claims 1 and 8 of the '428 Patent are directed to utilizing a two-way communication network to process data messages that cannot be successfully transmitted from a network operations center ("NOC") to a mobile unit. Claim 8 is representative and reproduced below.
8. In a two-way wireless communications system, a method of processing data messages that cannot be success fully transmitted from a network operations center to a wireless mobile unit comprising the steps of:
(a) transmitting a data message from the network operations center to the mobile unit;
(b) receiving at the network operations center a data acknowledgment message from the mobile unit acknowledging receipt of the data message sent by the network operations center;
(c) transmitting a probe message from the network operations center to the mobile unit if, after transmitting a data message to the mobile unit, no data acknowledgment message is received at the network operations center;
(d) marking at the network operations center a data message as undelivered if, after transmitting a probe message to the mobile unit, no probe acknowledgment message is received at the network operations center; and
(e) storing at the network operations center the undelivered data message.
The District Court determined that the asserted claims of the '428 Patent are directed to the basic idea of sending and storing messages, which is not rooted in computer technology. BlackBerry provided a hypothetical equating the claim functions to a courier attempting to deliver a package using the following steps:
(a) a courier tries to deliver a package to a person's house;
(b) if the person accepts delivery of the package, then the courier is informed that the package has been delivered;
(c) if the person does not answer, then the courier tries to determine the person's current location by knocking on the back door, going to the person's work, or other places the person is known to visit;
(d) if the person still does not answer, the courier marks the package to be stored in the undelivered mail bin; and
(e) the courier then stores the undelivered package in the undelivered mail bin.
The District Court was persuaded by this hypothetical in that the idea of sending and storing messages as described in the '428 Patent is an abstract idea directed to a routine task that could be performed by a human.
Turning to the '506 patent, claim 8 describes an electronic messaging system that provides coded communications between messaging terminals. In particular, the claim recognizes that many paging messages consist of a relatively small number of common phrases. Thus, commonly used phrases can be treated as "canned" messages that can be replaced by short message codes. A key of canned messages and message codes is stored in both the terminal devices and the NOC, and this allows a user to select a canned message and for the associated message code to be sent through the communications network to the mobile device. When the mobile device receives the message code, then the corresponding canned message will be displayed to the user.
The District Court determined that claim 8 of the '506 Patent is directed to a method for effectuating the abstract concept of coded communication. BlackBerry provided an additional hypothetical of coded battlefield communications that persuaded the District Court and showed how the method of claim 8 of the '506 Patent could be performed by a human:
(a) a battlefield operations center has a lookup table that contains messages and their associated codes;
(b) two soldiers—soldier A and soldier B—each have a lookup table that contains messages and their associated codes;
(c) soldier A wants to send a coded message to soldier B and thus selects a message from his lookup table;
(d) soldier A determines the message code assigned to the selected message and sends the code using a message carrier to the battlefield operations center;
(e) battlefield operations center relays the message code to soldier B;
(f) soldier B uses the received message code and his lookup table to retrieve the message that soldier A sent; and
(g) soldier B looks at the retrieved message.
The practice of communicating using codes has been in existence for a long time, and the District Court thus concluded that coded communication is an abstract idea.
Inventive Concepts
Because the claims were found to be directed to abstract ideas, the District Court examined the elements of the claims to determine whether they contain an "inventive concept" sufficient to transform the claimed abstract idea into a patent-eligible application.
The '428 Patent employs a NOC and "mobile units" to carry out the steps of sending and storing messages. The District Court found those elements to be generic computer hardware components that do not add something significantly more as required to transform the abstract idea of sending and storing messages into a patent-eligible invention. The District Court came to the same conclusion for the '506 Patent.
Mobile Telecommunications (MTel) argued that the asserted claims of the '428 and '506 Patents are patentable because they claim a new and useful process for communication. According to MTel, claims 1 and 8 of the '428 Patent proposed a novel solution to the problem of losing data messages when an initial delivery attempt fails, by sending a probe message which saves capacity. Similarly, MTel argued claim 8 of the '506 Patent offered a new solution to a problem encountered on wireless networks by transmitting compressed messages.
The District Court noted that "novelty" of the claimed invention is not the proper focus of the § 101 inquiry.
MTel also argued that the patents address a needed improvement in electronic messaging technology, which cannot be accomplished solely with human activity. But the District Court found that the asserted claims do not solve problems specifically arising in the realm of computer networks, and that technology did not create the problems addressed. Further, the District Court found that the asserted claims do not specify how interactions with the two-way wireless network are manipulated to yield a desired result.
It is interesting to compare this Texas District Court decision with another recent decision captioned Sophos Inc. v. RPOST Holding, Inc. (U.S. District Court for the District of Massachusetts), in which patents directed to electronic delivery and verification of messages were found to satisfy 35 U.S.C. § 101. Four patents are in-suit, and Sophos argued that the patents-in-suit are invalid because they claim unpatentable abstract ideas characterized as the electronic equivalent of certified mail, the concept of notifying the sender that a message was successfully delivered, the concept of notification when the certified message was not successfully delivered, and the concept of using a communication system or language when delivering certified mail. Even though the patents do not claim any algorithm certifying the delivery of email, the District Court in Massachusetts found the claims to satisfy § 101 because they provide proof of delivery and content; a task that the United States Postal Service cannot do. The District Court also found the claims to recite an inventive concept by including an intermediate server between the sender and receiver of an electronic message to address the problem of providing reliable proof of the content and delivery of electronic messages, without requiring the cooperation of the recipient and without requiring special email software.
Mobile Telecommunications Technologies, LLC v. Blackberry Corp. (N.D. Tex. 2016)
Memorandum Opinion and Order by Chief Judge Barbara M. G. Lynn
