Electronic Communication Technologies, LLC ("ECT") sued ShoppersChoice.com, LLC ("ShoppersChoice"), alleging that ShoppersChoice infringed claim 11 of U.S. Patent 9,373,261 ("the '261 patent"). The district court granted ShoppersChoice's motion for judgment on the pleadings that claim 11 was invalid under 35 U.S.C. § 101. ECT appealed. The Federal Circuit ("the Court") affirmed the judgment of the district court.
The district court found that claim 11 was 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" and further concluded that claim 11 did not include an inventive concept. "The claim recites generic computer components that can be configured to perform purely conventional computer functions."
The Court agreed with the district court that claim 11 of the '261 patent was directed to an abstract idea. Claim 11 recites conventional computer components and "computer program code" that (1) enables a first party to input authentication information; (2) stores the authentication information; (3) monitors the location of a mobile thing; (4) initiates notification to the first party in advance of arrival of the mobile thing based in part on the location of the mobile thing; (5) provides the authentication information to the first party; and (6) enables the first party to select whether or not to communicate with a second party having access to particulars of the pickup or delivery. Two of the six identified functions, monitoring the location and notifying a party, "amount to nothing more than the fundamental business practice of providing advance notification of the pickup or delivery of a mobile thing."
The Court concluded that although "claim 11 also recites added measures that purport to increase security, those claimed functions are also abstract." Businesses have long been supplying customers with order numbers and recording customer information. "Claims, like claim 11, that are directed to longstanding commercial practices do not pass step one of the two-part § 101 test." "In addition, the process of recording authentication information-such as the customer's name, address, and telephone number-and including that information in a subsequent communication with the customer is abstract not only because it is a longstanding commercial practice, but also because it amounts to nothing more than gathering, storing, and transmitting information."
ECT argued that claim 11 was not directed to an abstract idea because it was "unique" (directed to and addressed solutions to minimize hackers' impacts). ECT's arguments were unpersuasive. Even if claim 11 is "unique," "that alone is insufficient to confer patent eligibility" and that "uniqueness" is itself abstract.
ECT also argued that claim 11 was patent eligible due to three aspects of the patent's prosecution history: (1) the application that became the '261 patent "sailed through" the USPTO by receiving an allowance in the very first Office action; (2) ECT "obtained the '261 patent with complete and total transparency"; and (3) ECT requested the USPTO to "double-check" its work on § 101 after ECT received the notice of allowance, upon which the USPTO reconfirmed its finding that the claims were patent eligible.
The Court explained that these specific details relating to prosecution before the USPTO "bear no relationship to the subject matter to which claim 11 is directed and do not negate the fact that claim 11 is directed to longstanding business practices. Nor do ECT's purported diligence and good faith during patent prosecution before the USPTO in any way shield the patent's claims from Article III review for patent eligibility." The Court agreed with the district court that claim 11 was directed to an abstract idea.
When addressing step two of the framework, the Federal Circuit concluded that the claims did not include an inventive concept sufficient to transform the claimed abstract idea into a patent eligible application. "[C]laim 11 is 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 identified previously."
In response to ECT's arguments that "this court held a far shorter, far less enabled claim valid," the Court explained that "patent eligibility turns on the content of the claims, not merely on the number of words recited in the claims. In addition, just because a patent claim is enabled does not mean that the claim is patent eligible-subject matter eligibility and enablement are separate inquiries, irrespective of any overlap between the two."
The Court also rejected ECT's arguments that the district court should have engaged in claim construction before deciding claim 11's eligibility. "ECT has not identified a single claim term that it believes requires construction before the eligibility of claim 11 can be decided, much less how this construction could affect the analysis." The Court concluded that "the district court properly resolved patent eligibility at the pleadings stage of the proceedings."
Electronic Communication Technologies, LLC v. ShoppersChoice.com, No. 2019-1587 (Fed. Cir. May 14, 2020)
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