May 28, 2020

Federal Circuit: Patent Eligibility Turns on the Content – Not Length – of the Claims

Holland & Knight Section 101 Blog
Anthony J. Fuga
Section 101 Blog

Electronic Communications Technologies (ECT) asserted its '261 patent, titled "Secure Notification Messaging with User Option to Communicate with Delivery or Pickup Representative," in the U.S. District Court for the Southern District of Florida. The defendant,, filed a motion for judgment on the pleadings and argued that the asserted claim was invalid under Section 101.

The district court agreed and found that "claim 11 is directed to the abstract idea of providing advance notification of the pickup or delivery of a mobile thing." The court explained that "business practices designed to advise customers of the status of delivery of their goods have existed at least for several decades, if not longer." The district court finally found that the asserted claim recited "generic computer components that can be configured to perform purely conventional computer functions" and granted the defendant's motion. ECT appealed.

The Federal Circuit's Section 101 Analysis

The U.S. Court of Appeals for the Federal Circuit, at step one of the inquiry, agreed that the asserted claim was directed to "providing advance notification of the pickup or delivery of a mobile thing." Looking at the claim, the court identified the functions of monitoring the location and notifying a party in advance of the arrival, and stated that those functions "amount to nothing more than the fundamental business practice of providing advance notification of the pickup or delivery of a mobile thing."

Claim 11 recited added measures that purport to increase security – namely, enabling a first party to input authentication information, storing the information and providing authentication information along with the advance notice, but "those claimed functions are also abstract." Looking at the patent's specification, the court noted that "authentication information" can be essentially any information recognizable to the party being contacted, and "businesses have long been supplying customers with order numbers and recording customer information." The court concluded that claims like the asserted claim, which are directed to longstanding commercial practices, do not pass step one of the two-part Alice test.  

At step two of the Alice inquiry, the Federal Circuit found the asserted claim to be "specified at a high level of generality, is specified in functional terms, and merely invokes well-understood, routine, conventional components and activity to apply the abstract idea." ECT argued that in Amdocs, the Federal Circuit held a far shorter claim to be valid. Patent eligibility, however, "turns on the content of the claims, not merely on the number of words recited in the claims."

ECT also argued that the asserted claim was not invalid because of three aspects from the patent's prosecution history:

  1. The application that ultimately became the '261 patent "sailed through" the U.S. Patent and Trademark Office (USPTO) by receiving an allowance in the very first office action.
  2. ECT "obtained the '261 patent with complete and total transparency."
  3. ECT requested the USPTO to "double-check" its work on Section 101 after ECT received the notice of allowance, upon which the USPTO reconfirmed its finding that the claims were patent eligible.

These arguments failed. The Federal Circuit stated that the specific details relating to the procedure of prosecution before the USPTO "bear no relationship to the subject matter to which claim 11 is directed and do not negate the fact that the claim is directed to longstanding business practices." Similarly, ECT's diligence and good faith during patent prosecution do not "in any way shield the patent's claims from Article III review for patent eligibility." 

The Federal Circuit, accordingly, affirmed the judgment.

* * *

Claim 11 of the asserted patent recites:

An automated notification system, comprising:

one or more transceivers designed to communicate data;

one or more memories;

one or more processors; and

computer program code stored in the one or more memories and executed by the one or more processors, the computer program code comprising:

code that enables a first party associated with a personal communication device (PCD) to input or select authentication information for use in connection with a subsequent notification communication session involving advance notice of a delivery or pickup of a good or service at a stop location by a mobile thing (MT);

code that causes storage of the authentication information;

code that monitors location or travel information in connection with the MT;

code that causes initiation of the notification communication session to the PCD with the one or more transceivers, in advance of arrival of the MT at the stop location, based at least in part upon the location or travel information associated with the MT;

code that, during the notification communication session, provides the authentication information to the PCD that indicates to the first party that the notification communication session was initiated by an authorized source; and

code that, during the notification communication session, enables the first party to select whether or not to engage in a communication session with a second party having access to particulars of the pickup or delivery.

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