Common computer technology has fallen victim to Alice
in many recent cases. It is therefore noteworthy that the District
of Massachusetts declined to invalidate e-mail management patents
under §101 in Sophos v. RPost.
The patents-in-suit are directed to inventions that verify the
delivery and integrity of electronic messages. RPost alleged Sophos
infringed the patents-in-suit and Sophos defended such claims by
alleging, among other things, that the patents-insuit are invalid
as being directed to patent ineligible abstract ideas.
The Court found that the patents-in-suit do not claim an
abstract idea, and if even so, they also claim an inventive concept
sufficient to satisfy step two under the Alice framework. Sophos
argued that "the '628 patent claims the electronic
equivalent of certified mail, the '389 patent recited the
concept of notifying the sender that a message was successfully
delivered, the '199 patent claims the concept of notification
when the certified message was not successfully delivered and the
'913 patent claims the concept of using a communication system
or language when delivering certified mail." (Sophos v.
RPost, p. 25.) Further, Sophos argued that the patents-in-suit
"do not teach an algorithm or other novel technique for
certifying the delivery of e-mail...but simply computerize concepts
that the post office has been using for years." (Sophos v.
RPost, pp. 25-26.)
The Court disagreed with Sophos' assertions and held that
"the patents-in-suit do not claim the abstract idea of
certified mail because their methods do more than provide proof of
mailing, they also provide proof of delivery and content."
(Sophos v. RPost, p. 26.) For support of its position, the
Court pointed to RPost's assertions, which "identified
several different claims from the patents-in-suit that relate to
verifying the content of messages, a task that the United States
Postal Service cannot do." (Sophos v. RPost, p.
Further, the Court held that, "even if the patents-in-suit
claim an abstract idea, they also claim an inventive concept
sufficient to pass muster under Alice." (See
Sophos v. RPost, at p. 26.) Although Sophos argued that
"the patents-in-suit duplicate a pre-internet business
practice on the internet because the patents-in-suit allegedly
acknowledge that their solution is directed at the same problem
that exists with regular mail, namely proof of delivery," the
Court maintained that the patentsin- suit address more than that.
(See Id.) In its conclusion, the Court found that
"the patents-in-suit aim to solve a technical problem of
electronic messages, which because of their form, present unique
challenges for establishing proof of receipt and delivery."
Generally, over-generalizing patent claims under a §101
analysis may prove to be futile when the claims recite an inventive
concept that is more than the proffered abstract idea. Patents
directed towards solving a technical problem also appear to stand a
greater chance of satisfying step two under the Alice
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