INTERNET COMMUNICATION MAY BE PATENTABLE IN THE US

This decision from the US District Court for the District of Delaware, Messaging Gateway Solutions, Llc V. Amdocs, Inc. And Amdocs, Limited, is a good example of a computer implemented invention that is considered patentable since the Alice decision [Alice Corp. V CLS Bank Int’l, 134 S. Ct. 2347, 2355(2014)]. Alice made the patterning of many software inventions, particularly computer implemented business methods, much more difficult in the US.

In one embodiment of the invention, a computer system patented by messaging Gateway Solutions receives an SMS text message, converts the SMS message into an Internet protocol message, and delivers the converted message to an internet server. As the courts put it, the invention translates a mobile phone language into Internet language. Here is the invention as defined by claim 20 of the patent in suit, which is US 8,750,183:

A method of using a computer system to facilitate two-way communication between a mobile device and an Internet server, comprising:
         the computer system receiving a text message via a first communication path;
the computer system inserting at least a message body of the text message into an Internet Protocol (IP) message; and
the computer system transmitting the IP message to the Internet server, via a second communication path,
wherein the text message originates from the mobile device as a short message service (SMS) text message, and wherein the SMS text message contains a multi-digit address that is fewer than seven digits and that is associated with a URL of the internet server. 
The defendants attacked claim 20 for being directed to an abstract idea, as part of the two-step Alice analysis which can be found in my post here.  The two step Alice analysis is used to frequently invalidate software patent applications.  The two-step analysis is: First, determine if the claims at issue are directed at a patent-inteligible concept. If so, the next step is to look for an “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.” It was argued that the claim was to the abstract idea of, variously, “delivering a message using an address”, “receiving a message on one format, changing the message into another format, and sending the newly formatted message to its destination” and”converting information from one format to another”. Messaging Gateway Solutions responded that the defendants were over generalising the claim. The Court generally agreed, however they did find that the claim was indeed directed to the abstract idea which was essentially the same as a translator assisting people who speak different languages to communicate with each other, although in this instance the translation was between SMS text message and Internet protocol message; translating mobile phone language into Internet language.

It is interesting to note that His Honour repeated to the Supreme Court view that “at some level, all inventions and body use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. If one looks at almost any patent from far enough away, it could arguably claim an abstract idea. For example, Alexander Graham Bell’s patent could be said to claim the abstract idea of oral communication. But his invention was not the concept of oral communication itself; it was a technological innovation that allowed a type of oral communication between people who could otherwise not communicate in that way”.
His honour notes that the claimed method here does the same: it uses technology that allows communication where it would otherwise be impossible.

His Honour also noted that claim 20 contains meaningful limitations that prevented the pre-empting the abstract idea of receiving, translating, and delivering a message. It is limited to SMS text messages between a mobile device and the Internet. In my view, this clearly suggests that narrow claims that are “firmly rooted in technology and address specific problem” and that contains sufficient limitations to prevent it from pre-empting an abstract idea – as his honour put it – is more likely to be found patentable.

It is interesting to note that in arguing its case for patentability, the plaintiff claimed that the invention had particular properties that were favourably considered in Alice. These were:
·      a new and useful end;
·      it applies an idea to solve a specific, concrete problem; and
·      it has meaningful limitations so that the abstract idea does not becomeunavailable to all, that isit applies only to SMS messages addressed to phone numbers for less than seven digits and associated with a URL, and consequentlythe “building blocks of human ingenuity” remain available although the patent is valid.
These lessons can be applied when drafting patent applications for software and computer implemented inventions.

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