Message Exchange Patent Held Invalid under Section 101

Mobile Telecommunications Technologies, LLC ("MTel") sued United Parcel Service, Inc. ("UPS") in the U.S. District Court for the Northern District of Georgia for infringement of U.S. Patent No. 5,786,748.  After several years of litigation, UPS filed a Motion for Judgment on the Pleadings, arguing that the '748 patent was aimed at the abstract idea of delivery notification and therefore not patentable under 35 U.S.C. § 101.

The Court agreed, holding under the two-step framework provided by Alice Corp. that (1) the patent was in fact aimed at the abstract idea of delivery notification, and (2) although the patent limited itself to a "particular technological environment," it did not supply the "inventive concept" needed to render it patentable.

MTel filed a Motion for Reconsideration and argued that new case law issued by the Federal Circuit requires the '748 patent to be found to satisfy 35 U.S.C. § 101.

The '748 Patent

The '748 patent was filed February 28, 1997, based on a provisional patent application filed February 29, 1996.  The '748 patent is directed to a method of providing prompt notification of delivery of an express mailing to an addressee via messages relayed to and from a wireless paging center.  A paging number of a person to be notified upon delivery of the express mailing is communicated to an express mail tracking network and to an operations center of a wireless paging service.  When the paging operations center learns of the delivery, either from the tracking network or from a page message transmitted from the delivery site, the person to be notified is paged by the operations center.

Claim 1 is representative and is reproduced below:

1.  A method for providing notification of an express mail delivery to an addressee thereof, comprising the steps of:
    sending to an express mail tracking service an ID number assigned to an express mailing and a page number of a delivery notification recipient;
    relaying the ID, page number, and an appointed time to a paging operations center;
    providing a first indication to the paging operations center that the express mailing has been delivered to the addressee;
    providing a second indication to the paging operations center that the express mailing has not been delivered to the addressee by the appointed time;
    transmitting, responsive to the first indication, a wireless page message to the recipient as notification of the express mailing delivery; and
    transmitting, responsive to the second indication, a wireless page message to the recipient notifying recipient that the express mailing has not been delivered by the appointed time.

Motion for Reconsideration

In its Motion for Reconsideration, MTel argued that the Court slipped into impermissible hindsight bias when conducting step two of the Alice Corp. analysis.  Specifically, MTel argued that the Court committed clear error when it observed that "MTel's patent . . . covers a method for delivery notification that could be implemented with generic components, using two of the most popular methods of communication currently available in SMS text messages and e-mail."  According to MTel, the Court was required to examine technology as it existed in 1996 (i.e., the priority date of the '748 patent) when assessing whether or not the ordered combination of limitations supplied an "inventive concept" rendering MTel's claims patentable.

Thus, the main argument by MTel is that the Court engaged in impermissible hindsight bias by viewing the '748 Patent in light of the ubiquity of wireless messaging technology today, instead of determining whether the limitations in the patent were well-understood, routine, or conventional in the art in 1996, when the provisional patent application was filed.

But the Court was not persuaded.  The Court's previous reasoning for finding the patent invalid under § 101 was that the claim elements were the rough equivalent of merely generic computers performing routine computer functions.  To add to that point, the Court noted that the claims do not require specific structures, and data elements such as the "paging operations center", "express mail tracking service", "ID number", and "wireless page message" were not structural limitations and did not add any limiting feature.

The Court concluded that the claims here merely provide a generic environment in which to carry out the abstract idea.

The Court found that the claims' use of these components did not display an inventive combination because the specification limits its discussion of these components to abstract functional descriptions devoid of technical explanation as to how to implement the invention.  MTel's specification was found to fail to provide any technical details for the tangible components, but instead predominantly describing the system and methods in purely functional terms.

The Court also contrasted Enfish, which is plainly about a patent whose core aim is improving computer functionality, while the '748 patent's core aim was found to be a method for delivery notification, which was considered an economic or other task for which a computer is used in its ordinary capacity.  Thus, the Court denied MTel's Motion for Reconsideration, and held the '748 patent to be directed to ineligible subject matter under section 101.

While MTel's argument of determining whether the limitations in the patent were well-understood, routine, or conventional in the art at the time of filing seems to hold weight, the Court went in a different route and found that the claimed functions themselves were routine computer functions.  Of course, functions of sending, relaying, providing, and transmitting are routine computer functions, but certainly, MTel would argue that the specific combination of such functions and data content processed in this specific way, was new and unconventional in 1996.  The Court did not seem to address such an argument, and instead heavily focused on a requirement of the claims reciting structure, and the patent having some improvement in computer functionality (aka Enfish) in order to satisfy section 101.

Order by District Judge Amy Totenberg