Order Granting Judgment on the Pleadings, Whitepages, Inc. v. Isaacs, et al., Case No. 16-cv-00175-RS (Judge Richard Seeborg)
Litigants continue to use Alice and its progeny to cull the ranks of patents asserted in the Northern District. In Whitepages v. Isaacs, Judge Seeborg considered a patent that purported to bring caller ID to mobile phones and the internet. His opinion holding the patent invalid mentions factors that are becoming familiar hallmarks of patents vulnerable to § 101 challenges: reciting longstanding business practices, invoking industry-standard technology, and requiring no more than generic use of computers.
Plaintiff Whitepages brought a complaint for declaratory judgment of non-infringement of U.S. Patent No. 8,861,698. The patent claims systems and methods for providing a caller's name after entry of the caller's phone number. Judge Seeborg's opinion explains the background of such services: Telephone companies began offering caller name ID (CNAM) for landlines in the 1980s. Around 1997, Whitepages put phonebook data on its internet-searchable database, making reverse lookups possible, at least for landlines. But as mobile phones proliferated, caller name ID lagged, in part because the number of databases storing name information greatly increased after the deregulation of telecom carriers. In 2013, defendant Isaacs began developing the patented technology, which allows a user to "input a telephone number into a website or mobile phone interface" and uses the industry standard SS7 protocol to look up the name information. Notably, the patentee asserted that SS7 was the only way to access CNAM databases; indeed, its basis for alleging infringement was that Whitepages appeared to use information from CNAM databases and ergo must be infringing.
In Alice step one, this reliance on industry-standard technology immediately became a problem. Judge Seeborg readily concluded that "[t]he patent employs industry-standard technology to perform a longstanding business practice, with no asserted improvement other than to use generic internet applications to obtain certain customer side advantages. As such, the claims are directed to the patent-ineligible abstract idea of looking up a name associated with a phone number."
Judge Seeborg noted that the lookup process could be performed by humans "by sliding a finger down the columns of a phone book," and the patent specification also suggested it was a longstanding business practice. To the patentee's argument that the claims were directed to a "particular way" of finding out the identity of a caller, Judge Seeborg found that "particular way" was simply using a generic web browser and the ubiquitous SS7 technology that Isaacs did not invent. We have seen in a decision pre-dating Alice that Judge Seeborg is skeptical of patents that appear simply to implement longstanding human activity on a generic computer. This new decision reflects the same.
Turning to Alice step two, Judge Seeborg found there was no "'inventive concept' sufficient to 'transform' the abstract idea into a patent-eligible application"—the standard from Alice. The patentee did not invent the CNAM databases nor the SS7 technology used to query them; instead, the alleged invention was a new "mechanism to access" the preexisting information. Judge Seeborg found, however, that the new solution "reduces to use of the internet," which was insufficient. He emphasized that the patent "discloses no programming, algorithm, unique hardware, or technological or procedural improvements" and that it invoked generic web or mobile phone applications but "discloses no new website, no new app, no new networking equipment, and no new manner of querying a CNAM database."
The patentee also argued the patent solved the problem that caller name functionality had been unavailable or expensive when the patent was filed. But Judge Seeborg found the innovations at best were "directed to an 'entrepreneurial objective'; they simply are not technological." Judge Seeborg also rejected an argument that any Alice step two ruling be postponed until after discovery and claim construction, finding he sufficiently understood "the basic character of the claimed subject matter" based on the patentee's factual allegations and the history set out in the specification.
Judge Seeborg's decision offers some examples of considerations that will support a successful § 101 challenge—not least of which is a patentee's allegations making a patent sound less inventive rather than more.
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