In Telinit Technologies, LLC Alteva, Inc., [2:14-cv-369] (E.D. Tex. September 21, 2015), Judge Shroeder granted Judgment on the Pleadings that U.S. Patent Number 6,192,123 on a Method and Apparatus for Initiating Telephone Calls Using a Data Network is Invalid for Claiming Ineligible Subject Matter.
The Court applied the two-part test of Alice, first determining whether the claims at issue are directed towards one of the three patent-ineligible concepts, and then considering whether 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.
The Court first considered claim 1, directed to “a method for initiating telephone calls on a voice network in response to requests from a data network comprising the steps, performed by a processor.”
The Court rejected Telnit’s reliance on DDR Holdings, finding that the claim “describes a well-known and widely-understood concept—making a telephone call—and then applies that concept to the Internet using conventional computer components as an intermediary to place and monitor the telephone calls.”
The Court found the claim more analogous to the claims from the asserted patent in Dick’s Sporting Goods.Telinit challenged the assertion that the claim is abstract because “because a human being would be unable to receive a ‘data request’ or monitor a telephone call originating from the Internet.” The Court responded that taking an otherwise abstract idea and applying it to the Internet does not transform the claim into patentable subject matter, and found that the remaining stepsare tasks that human beings, such as telephone operators, have been doing for the past century. The Court further noted that the claim does not contain any specific structural components—beyond a generic “processor” and generic “networks”—that remove it from the realm of an abstract idea.
The Court continued its analysis to determine whether the claims nonetheless disclosed an inventive concept. The Court said, that even accepting the structures and corresponding functions identified by Telinit as those most favorable to Telinit, none, taken individually or in combination, transform the claim so as to cover an inventive concept. The primary structures identified by Telinit result in nothing more than generic computer and Internet based elements—“processor” and “networks.” Moreover, claim 1 does not direct the generic elements to a specific application beyond “receiving,” “identifying,” “signaling,” “monitoring,” or “providing” information. Consequently, the Court found that claim 1 does not contain any transformative elements, either alone or in combination, that transforms its abstract idea into patentable subject matter.
The Court also considered the application of the Machine-or-Transformation Test. The Court noted that Bilski made it clear that the machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process, but noted tht it is a useful and important clue, an investigative tool, for determining patentability. The Court found that the patent was not tied to a particular machine or apparatus, and it did not operate to change articles or materials to a different state or thing. Accordingly, the Court found that the machine-or-transformation test did not aid the Court in determining whether or not the claims recite patent-eligible subject matter.