Parus Holdings, Inc. v. Sallie Mae Bank
Parus Holdings, Inc. v. Sallie Mae Bank
Opinion of the Court
MEMORANDUM OPINION
I. INTRODUCTION
On November 21,- 2014, plaintiff Parus Holdings, Inc. (“plaintiff’) filed patent infringement actions against defendants PNC Bank, National Association,
II. BACKGROUND
Plaintiff Parus Holdings, Inc, is a Delaware corporation having its principal place of business in Bannockburn, Illinois. Defendant PNC -Bank, N.A. is a federally chartered bank having, its principal place of business in Pittsburgh, Pennsylvania. (D.I. 1) Defendant SunTrust Bank is a bank chartered under the laws of the State of Georgia with its principal place of business in Atlanta, Georgia. Defendant Sun-Trust Mortgage, Inc. is a corporation organized under the laws of the Commonwealth of Virginia with its principal place of business in Richmond, Virginia.
The patents-in-suit issued from a series of continuation applications based on a common specification.
III. STANDARD OF REVIEW
A motion filed under Federal Rule of Civil Procedure 12(b)(6) tests the sufficiency of a complaint’s , factual allegations. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007); Kost v. Kozakiewicz, 1 F.3d 176, 183 (3d Cir. 1993). A complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the ... claim is and the grounds upon which it rests.” Twombly, 550 U.S. at 545, 127 S.Ct. 1955 ‘(internal quotation marks omitted) (interpreting Fed. R. Civ. P. 8(a)). Consistent with the Supreme Court’s rulings in Twombly and Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009), the Third Circuit requires a two-part analysis when reviewing a Rule 12(b)(6) motion. Edwards v. A.H. Cornell & Son, Inc., 610 F.3d 217, 219 (3d Cir. 2010); Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). First, a court should separate the factual and legal elements of a claim, accepting the facts and disregarding thé legal conclusions. Fowler, 578 F.3d at 210-11. Second, a court should determine whether the remaining well-pied facts sufficiently show that the plaintiff “has a ‘plausible claim for relief.’ ” Id. at 211 (quoting Iqbal, 556 U.S. at 679, 129 S.Ct. 1937). As part of the analysis, a court must accept all well-pleaded factual allegations in the complaint as true, and view them in the light most favorable to the plaintiff. See Erickson v. Pardus, 551 U.S. 89, 94, 127 S.Ct. 2197, 167 L.Ed.2d 1081 (2007); Christopher v. Harbury, 536 U.S. 403, 406, 122 S.Ct. 2179, 153 L.Ed.2d 413 (2002); Phillips v. Cnty. of Allegheny, 515 F.3d 224, 231 (3d Cir. 2008). In this regard, a court may consider the pleadings, public record, orders, exhibits attached to the complaint, and documents incorporated into the complaint by reference. Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322, 127 S.Ct. 2499, 168 L.Ed.2d 179 (2007); Oshiver v. Levin, Fishbein, Sedran & Berman, 38 F.3d 1380, 1384-85 n. 2 (3d Cir. 1994).
The court’s determination is not whether the non-moving party “will ultimately prevail” but whether that party is “entitled to offer evidence to support the claims.” United States ex rel. Wilkins v. United Health Grp., Inc., 659 F.3d 295, 302 (3d Cir. 2011). This “does not impose a probability requirement at the pleading stage,” but instead “simply calls for enough facts to raise a reasonable expecta
IV. DISCUSSION
A. 35 U.S.C. § 101
Section 101 provides that patentable subject matter extends to four broad categories, including: “new and useful processes], machinéis], manufacture, or composition[s] of matter.” 35 U.S.C. § 101; see also Bilski v. Kappos, 561 U.S. 593, 601, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010) (“Bilski II”); Diamond v. Chakrabarty, 447 U.S. 303, 308, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980). A “process” is statutorily defined as a “process, art or method, and includes a new use of a known process; machine manufacture, composition of matter, or material.” 35 U.S.C. § 100(b). The Supreme Court has explained:
A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts-, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful; it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not' be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.
Diamond v. Diehr, 450 U.S. 175, 182-83, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (internal quotations omitted).
The Supreme Court recognizes three “fundamental principle” exceptions to the Patent Act’s subject matter eligibility requirements: “laws of nature, physical phenomena, and abstract ideas.” Bilski II, 561 U.S. at 601, 130 S.Ct. 3218. In this regard, the Court has held that “[t]he concepts covered by these- exceptions are ‘part of the storehouse-of knowledge of all men ... free to all men and reserved exclusively to none.’ ” Bilski II, 561 U.S. at 602, 130 S.Ct. 3218 (quoting Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948)). “[T]he concern that drives this exclusionary principle is one of pre-emption,” that is, “ ‘that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, — U.S. —, 134 S.Ct. 2347, 2354, 189 L.Ed.2d 296 (2014) (citing Bilski II, 561 U.S. at 611-12, 130 S.Ct. 3218 and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. —, 132 S.Ct. 1289, 1301, 182 L.Ed.2d 321 (2012)).
Although a fundamental principle canpot be patented, the Supreme Court has held that “an application of a law of nature . or mathematical forniula to a known structure or process may well be deserving of patent protection,” so long as that application would not preempt substantially all uses of the fundamental principle. Bilski II, 561 U.S. at 611, 130 S.Ct. 3218 (quoting Diehr, 450 U.S. at 187, 101 S.Ct. 1048) (internal quotations omitted); In re Bilski, 545 F.3d 943, 954 (Fed.Cir. 2008) (“Bilski I”). The Court has described the
framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.- First, we determine whether the claims at issue are directed*665 to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before üs?” Tó answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. We have described step two of this analysis as a search for án “ ‘inventive concept’ i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more- than a patent upon the [ineligible concept] itself.”
Alice, 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1294, 1296-98).
“[T]o transform an unpatentable law of nature into a patent-eligible application of such a law, one must do, more than simply state the law of nature while adding the words ‘apply it.’ ” Mayo, 132 S.Ct. at 1294 (citing Gottschalk v. Benson, 409 U.S. 63, 71-72, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972)) (emphasis omitted). It is insufficient to add steps which “consist of well-understood, routine, conventional activity,” if such steps, “when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” Mayo, 132 S.Ct. at 1298. “Purely ‘conventional or obvious’ ‘[pre]-solution activity' is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.” Id. (citations omitted). Also, the “prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant post-solution activity.’” Bilski II, 561 U.S. at 610-11, 130 S.Ct. 3218 (citation omitted). For instance, the “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into, a patent-eligible invention.” Alice, 134 S.Ct. at 2358. “Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’ ” Id. (citations omitted).
Because computer software comprises a set of instructions,
the “store within a store” concept ... may have been well-known by the relevant time frame, that' practice did not have' to account for the ephemeral nature of* an Internet “location” or the near-instantaneous transport between .these locations made possible by standard Internet communication" protocols, which introduces a problem that does not arise in the “brick and mortar” context.
773 F.3d at 1258. In other words, “[although the claims address[ed] a business challenge ..., it [was] a challenge particular to the Internet.” Id. at 1257. The Court concluded that, under any of the characterizations of the abstract idea, the claims satisfied step two of Alice as being
different enough in substance from those in Ultramercial because they do not broadly and generically claim “use of the Internet” to perform an abstract business practice (with insignificant added activity). Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result—a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.....
In sum, [U.S...Patent No. 7,818,399]’s claims are unlike the claims in Alice, Ultramercial, buySAFE, Accenture, and Bancorp, that were found to be “directed to” little more than an abstract concept. To be sure, the '399 patent’s claims do not recite an invention as technologically complex as an improved, particularized method of digital data compression. But nor do they recite’ a commonplace business method áimed at processing business information, applying a known business process to the particular technological environment of the Intérnet, or*667 creating or altering contractual relations using generic computer functions and conventional network operation, such as the claims in Alice, Ultramercial, buySAFE, Accenture, and Bancorp.
Id. at 1258-59 (citing Alice, 134 S.Ct. at 2359; Ultramercial, 772 F.3d 709, 714-16 (Fed.Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.Cir. 2014); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed.Cir. 2013); Bancorp, 687 F.3d at 1277-78); but see Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1331-35 (Fed.Cir. 2012).
In DDR, the analytical framework (in the context of computer-implemented inventions) was articulated so as to require that the inventive concept “recite a specific way” to solve a “particular Internet-centric problem,” with the claimed solution being “necessarily rooted in computer technology,” so that the result “is not merely the routine or conventional use of the Internet.” 773 F.3d at 1257, 1259. Since providing that explanation, the Federal Circuit has not preserved the validity of any other computer-implemented invention under § 101.
Steps that do nothing more than spell out what it means to “apply it on a computer” cannot confer patentabili-ty____Requiring the use of a “software” “brain” “tasked with tailoring information and providing it to the user” provides no additional limitation beyond applying an abstract idea, restricted to the Internet, on a generic computer.
Id. at 1370-71. In distinguishing DDR, the Intellectual Ventures Court offered the following analysis:
The patent at issue in [DDR] dealt with a problem unique to the Internet: Internet users visiting, one web site might be interested in viewing products sold on a different web site, but the owners of the first web site did not want to constantly redirect users away from their web site to a different web site____ The claimed solution used a series of steps that created a hybrid web page incorporating “look and feel” elements from the host web site with commerce objects from the third-party web site.... The patent at issue in DDR provided an Internet-based solution to solve a problem unique to the Internet that (1) did not foreclose other ways of solving the problem, and (2) recited a specific series of steps that resulted in a departure from the routine and conventional sequences of events after the click of a hyperlink advertisement. ... The patent claims [in Intellectual Ventures] do not address problems unique to the Internet, so DDR has no applicability.[16 ]
Id. at 1371 (citations omitted).
In reviewing post-Aiice cases such as DDR and Intellectual Ventures, the court is struck by the evolution of the § 101 jurisprudence, from the complete rejection of patentability for computer programs
The Federal Circuit has “never set forth a bright line rule requiring district courts to construe claims before determining subject matter eligibility.” Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1325 (Fed.Cir. 2011), vacated sub nom. WildTangent, — U.S. —, 132 S.Ct. 2431, 182 L.Ed.2d 1059 (2012). Given the gate-keeping nature of § 101, “claim construction may not always be necessary for a § 101 analysis.” Ultramercial, 657 F.3d at 1325 (citing Bilski II, 561 U.S. at 611, 130 S.Ct. 3218 (finding subject matter ineligible for patent protection without claim construction)). In Bancorp, the Federal Circuit reiterated that “claim construction is not an inviolable prerequisite to a validity determination under § 101,” but it may be “desirable—and often necessary—to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the. claimed subject matter.” Bancorp, 687 F.3d at 1273-74. In advocating for judicial efficiency, the Federal Circuit recently stated:
From a practical perspective, addressing section 101 at the outset of litigation will have a number of salutary effects. First, it will conserve scarce judicial resources. Failure to recite statutory subject matter is the sort of “basic deficiency,” that can, and should, “be exposed at the point of minimum expenditure of time and money by the parties and the court,” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 558, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (citations and internal quotation marks omitted). Here, for example, the district court properly invoked section 101 to dismiss Ultramercial’s infringement suit on the pleadings. No' formal claim construction was required because the asserted claims disclosed no more than “an abstract idea garnished with accessories” and there was no “reasonable construction, that would bring [them] within patentable subject matter.” Ultramercial, LLC v. Hulu, LLC, No. 09-CV-6918, 2010 WL 3360098, at *6 (C.D.Cal. Aug. 13, 2010).
Ultramercial, 772 F.3d at 718-19.
Plaintiff argues that “key claim elements ... have yet to be construed.” (D.I. 13 at 19) Specifically, plaintiff states that
the scope of the terms “voice server” ('600 patent, claims 1, 5, and 9), “speaker-independent” (all claims of the '120, '141, and '074 patents), “speech recognition” (all claims), and “natural” speech and voice (all claims of the '120, '141, and '074 patents) may be vital to determining whether these limitations provide a meaningful limitation on the scope of the claims as a whole.
(Id.) (emphasis added) Plaintiff also argues that “[i]f it is not otherwise clear on its face, claim construction would be required to determine whether the claims cover the messaging unification.” (Id. at 20) Plaintiff, however, does not proffer a construction which would affect the analysis of patent eligibility. Plaintiffs. arguments below focus on the broader concepts of the claims and the computer components used to argue for patent eligibility. The court concludes that it may proceed to the § 101 analysis.
C. The Patents
The present invention is a network system, which is based on [I]nternet, computing and telecommunications standards, utilizing computer and [I]nternet technology, an innovative graphical user interface, integrated communication applications and interactive voice recognition technology. The present invention is a unified messaging service which will be accessible from any standard communication device (telephone, computer or [I]nternet), and will give the user intuitive voice command of personal, professional and public information.
Claim 1 of the '600 patent recites: -
A computer and telecommunications network for receiving, sending and managing information from a subscriber to the network and from the network to a subscriber comprising:
at least one cluster, said cluster containing at least one voice server, said voice server containing telephony, speech recognition, text-to-speech and conferencing functions, such that said subscriber can access said cluster by a standard telephone connection or by a[n] [Internet connection;
at least one database server, said database server being, connected to said cluster and containing contact lists and administrative data, such that said subscriber can manipulate and manage said data;
at least one file server, said file server being connected to said cluster; and a web server, said web server being connected to said cluster such that said subscriber can access said network by connecting to said web server via the [I]nternet;
wherein said network can receive a message from said telephone connection or said [I]nternet connection and transmit said message to said subscriber by said telephone or [I]nternet connection, and said network can -receive a message from said subscriber by telephone'connection or [I]nternet connection- and transmit’said message by telephone connection or said [I]nternet connection based on commands received from said subscriber.
(7:45-8:3) Claim 5 recites:
A method for receiving, sending and managing information between a computer and telecommunications network and a subscriber comprising the steps of:
providing at least one cluster, said cluster containing at least one voice server, said voice server containing telephony, speech recognition, text-to-speech and conferencing functions, such that said subscriber can access said cluster by a standard telephone connection or by a[n] [I]nternet connection;
providing at least one database server, said database server being connected to said cluster and containing contact lists and administrative data, such that said subscriber can manipulate and manage said data;
*672 providing at least one file server, said file server being connected to said cluster; and
providing a' web server, said web server being connected to said cluster such that said subscriber can access said network by connecting to said web server via the [I]nternet;
receiving a message from said telephone connection or said [IJnternet connection transmitting said message to said subscriber by said telephone or [Ijnternet connection, based on commands received by the network from said subscriber.
(8:17-40)
D. Analysis
Applying the analytical framework of Alice, the court first “determine[s] whether the claims at issue are directed to one of those patent-ineligible concepts,” namely, laws of nature, natural phenomena, and abstract ideas. 134 S.Ct. at 2354-55. Defendants contend that independent claim 1 of the '600 patent is representative in concept of all 86 claims
The- claim language (which does not recite a'unification theory) calls for using a “computer and telecommunications network for receiving, sending and managing information from a subscriber to the network and from the network.to a subscriber.” Specifically, as described by defendants, the claim focuses on the automated tasks of (1) receiving messages via a phone or Internet connection and then transmitting those messages - to a subscriber by phone or Internet;- and (2) receiving a message from a subscriber by phone or Internet- and then forwarding that message based on rules established by the subscriber.
Turning to step two of the Alice framework, the specification explains that the “present invention is a compilation of hardware and software” and lists the hardware and software components used to automate the processes routinely performed by administrative assistants. (5:48-67) Focusing on the claim language,
Plaintiff responds that the patents-in-suit nevertheless satisfy the second prong of the Alice test as: (1) they solve problems that specifically arise in communications technologies;
Nor do the steps claimed provide sufficient specificity to negate the risk of preemption. Organizing business functions based on commands provided by a user is tantamount to the automation of the management of business communications usually performed by human administrative assistants (the identified purpose of the invention). At. best, the claims describe using known technology (voice recognition, telephone or Internet) to enable the “subscriber” to manage a network system made up of known communications components (e.g., telephone, Tax, and answering machine) and computer components (e.g., servers and computers).
As to the machine or transformation test, plaintiff avers that “the very purpose of unified messaging is the ability to transform a particular communication into a different state or communication,” e.g., voi-cemails into text or faxes into e-mails or spoken voice. (D.I. 13 at 18) Plaintiff explains that “the purpose of natural speech recognition is to transform spoken words into a function to be executed, data to be stored, or a configuration to be set.” (Id.) However, the patent does not claim the alleged transformations.
Given the options illustrated in the specification and the broad claim language, the “inventive concept” of the patents-in-suit does not pass muster under § 101. Even if the problem addressed were characterized as Internet-centric, the claimed solution is not described with enough specificity to place meaningful boundaries on the inventive concept.
For the foregoing reasons, the court grants defendants’ motions to dismiss. An appropriate order shall issue.
. Civ. No. 14-1428. All references are.to this action unless otherwise indicated.
. Civ. No. 14-1429.
. Civ. No. 14-1427.
. Civ. No. 14-1427, D.I. 14;'Civ. No". 14-1429, D.I. 10.
. SunTrust Mortgage, Inc. is a wholly-owned subsidiary of SunTrust Bank.
. Sallie Mae Bank and Sallie Mae, Inc., were subsidiaries of SLM Corp., which recently underwent corporate reorganization to spin off, among other things, its federal education loan servicing business to form Navient Corp. Navient Solutions, Inc., is now a subsidiary of Navient Corp.
. All citations are ,to the '600 patent unless otherwise indicated.
. The '600 patent is terminally disclaimed back to its parent, U.S. Patent No, 6, 775,264 ("the '264 patent”). The '074, '120, and '141 patents are also disclaimed back to the '264 patent as well as to the '600 patent.
. The machine-or-transformation test still may provide a "useful clue” in the second step of the Alice framework. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.Cir.2014.) (citing Bilski II, 561 U.S. at 604, 130 S.Ct. 3218 and Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed.Cir. 2012). A claimed process can be patent-eligible under § 101 if: “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” Bilski I, 545 F.3d at 954, aff’d on other grounds, Bilski II, 561 U.S. 593, 130 S.Ct. 3218.
. Or, to put it another way, software generally comprises a method "of organizing human activity.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367-68 (Fed.Cir. 2015) (citing Alice, 134 S.Ct. at 2351-52, and Bilski II, 561 U.S. at 599, 130 S.Ct. 3218).
. In DDR, representative claim 19 of the '399 patent recites:
A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:
(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages;
(i) wherein each-of the first web pages belongs to one of a plurality of web page owners;
(ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and
(iii) wherein the selected merchant, the out-source provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;
(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:
(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages;
(ii) automatically identify as the source page the one of the first web pages on which the link has been activated;
(iii) in response to identification of the source page, ' automatically retrieve the stored data corresponding to the source page; and
(iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays:
(A) information associated with the commerce object associated with the link that has been activated, and
(B) the plurality of visually perceptible elements visually corresponding to the source page.
773 F.3d at 1249-50 (emphasis added).
. See, e.g., Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343 (Fed.Cir. 2014); Allvoice Devs. US, LLC v. Microsoft Corp., 612 Fed.Appx. 1009 (Fed.Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed.Cir. 2015); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed.Cir. 2015); Intellectual Ventures, 792 F.3d 1363; Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed.Cir. 2015).
. Representative claim 1 of U.S. Patent No. 7,603,382 recites:
A system for providing web pages accessed from a web site in a manner which presents the web pages. tailored to an individual user, comprising:
an interactive interface configured to provide dynamic web site navigation data to the user, the interactive interface comprising:
a display depicting portions of the web site visited by the user as a function of the web site navigation data; and
a display depicting portions of the web site visited by the user as a function of the user's personal characteristics.
Intellectual Ventures, 792 F.3d at 1368.
. In this regard, the observation made by the district court in Paone v. Broadcom Corp., Civ. No. 15-0596, 2015 WL 4988279 (E.D.N.Y. Aug. 19, 2015), is worth noting, that (in the context of encryption technology) it was of
no moment that “[encryption, in general, represents a basic building block of human ingenuity that has been used for hundreds, if not thousands, of years.” That is because [U.S. Patent No, 6,259,789] does not claim a process that can or does involve the encryption of data for some purpose that is otherwise abstract. Rather, it claims a specific method of doing so.
Id, at *7 (citation omitted) (emphasis omitted).
. Despite the “dynamic presentation of data—that is, ... the claimed invention in ‘real time' customizes the web page based on the information it knows about the particular viewer”—and despite the claimed "interactive interface,” which was “broadly construed by the district court to mean ‘a selectively tailored medium by which a web site user communicates with a web site information provider.’ ” Intellectual Ventures, 792 F.3d at 1369-70.
. But recall the "store within a store” pre-Internet analog rejected in DDR.
. See, e.g„ 33 Fed. Reg. 15581, 15609-10 (1968), and Justice Steven’s dissent in Diehr, whose solution was to declare all computer-based programming unpatentable, 450 U.S. at 219, 101 S.Ct. 1048.
. State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed.Cir. 1998), abrogated by Bilski I, in which "a computer-implemented invention was considered patent-eligible so long as it produced a ‘useful, concrete and tangible result.’ ” DDR, 773 F.3d at 1255 (citing State Street Bank, 149 F.3d at 1373).
. Indeed, Judge Plager, in his dissent in Dedlertrack, suggested that,
as a matter of efficient judicial process I object to and dissent from that part' of the opinion regarding the '427 patent and' its validity under § 101, the section of the Patent Act that describes ■ what is patentable subject matter. I believe that this court should exercise its inherent power to control the processes of litigation ..., and insist that litigants, and trial courts, initially address patent invalidity issues in infringement suits in terms of the defenses provided in the statute: “conditions of patentability,” specifically §§ 102 and 103, and in addition §§ 112 and 251, and not foray into the jurisprudential morass of § 101 unless absolutely necessary.
Dealertrack, 674 F.3d at 1335. But see CLS Bank Int’l v. Alice Corp. Pty., 717 F.3d 1269, 1277 (Fed.Cir. 2013), aff'd, — U.S. —, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014).
. And, therefore, not an exercise that lends itself to, e.g., shifting fees pursuant to 35 U.S.C. § 285.
. See, e.g., Dealertrack, where the claim was about as specific as that examined in DDR, yet the Federal Circuit found the patent deficient because it did "not specify how the computer hardware and database [were] spe-daily programmed to perform the steps claimed in the patent,” 674 F.3d at 1333-34 (emphasis added). The disclosure of such programming details would likely nullify the ability of a patentee to enforce the patent, given the ease with which software can be tweaked and still perform the desired function.
. Ironically so, given the national concerns about piracy of American intellectual property-
. See, e.g., SiRF Tech., Inc. v. Int’l Trade Comm'n, 601 F.3d 1319 (Fed.Cir. 2010), a case where the Federal Circuit found that a GPS'receiver was "integral” to the claims at issue. The Court emphasized that a machine will only “impose a meaningful limit on the scope of a claim [when it plays] a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.” Id. at 1333.
. See, e.g., DDR, 773 F.3d at 1257-58; TQP Dev., LLC v. Intuit Inc., Civ. No. 12-180, 2014 WL 651935 (E.D.Tex. Feb. 19, 2014); Paone, 2015 WL 4988279.
. Which include 7 independent claims.
. Defendants also provided a hypothetical illustrating a human's performance of the abstract idea. (D.I. 9 at 10-11)
. Plaintiff disagrees with the characterization of claim 1 of the '600 patent as representative, pointing out the differences in "speech recognition limitations” of each independent claim 1 of the patents-in-suit: Claim 1 of the
. Plaintiff alleges that the patents-in-suit "address technological problems that were in their infancy in the mid-1990s when the inventions were developed, and that arose from differing communications architectures, protocols, networks, and devices.” (Id. at 12)
. Plaintiff provides an expert declaration to - support, the argument that the speech recognition tools are not generic, .off-the-shelf components, and "had to be interfaced and integrated into the system by the inventor with extensive software applications to operate in the manner described in the specification.” (D.I. 13 at 16-17; D.I. 14)
Reference
- Full Case Name
- PARUS HOLDINGS, INC. v. SALLIE MAE BANK and Navient Solutions, Inc., Defendants Parus Holdings, Inc. v. PNC Bank, National Association, Defendant Parus Holdings, Inc. v. Suntrust Bank and Suntrust Mortgage, Inc.
- Cited By
- 2 cases
- Status
- Published