IP Law Daily Call-waiting and caller-ID claims were patent-ineligible
Tuesday, June 11, 2019

Call-waiting and caller-ID claims were patent-ineligible

By Thomas K. Lauletta, J.D.

The plaintiff's patent claims failed both prongs of the Alice test, as being directed to an abstract idea, without an inventive concept that transformed the claim to be patent-eligible.

Morris Reese’s patent for call-waiting and caller-ID services were directed to an abstract idea and lacked any inventive concept that would make them patent-eligible, the U.S. Court of Appeals for the Federal Circuit has ruled, affirming a decision of the federal district court in Los Angeles. Therefore, the defendants that Reese filed patent infringement claims against, Sprint Nextel Corporation, TracFone Wireless, Verizon Wireless Services, AT&T Mobility II, and T-Mobile USA, were entitled to summary judgment. Reese’s arguments, seeking to overrule the district court's granting of summary judgment on a procedural ground, and on the ground that his patent is sustainable under the Alice test as a patent-eligible claim, were rejected (Reese v. Sprint Nextel Corp., June 10, 2019, Reyna, J.).

Reese had filed an action in district court on May 29, 2013, alleging that various cellular wireless companies infringed on his patent, U.S. Patent No. 6,868,150 ("the ’150 Patent"), by providing call-waiting and caller-ID services. The ’150 Patent is titled, "Method for Use with Caller ID System." Each of the two asserted claims is directed to a method comprising two steps: (a) receiving a private-flagged directory telephone number of a calling party at a "terminating central office"; and (b) the terminating central office then sending a call waiting tone to the called party to notify them of the incoming call from the calling party. The "notification" takes the form of the well-known call waiting tone signal.

District court's grant of summary judgment. Reese argued that the lower court erred in granting summary judgment without construing the claims. The appellate court rejected this argument, noting that claim construction was not required here because the pleadings and record of the case allowed a full understanding of the basic character of the claimed subject matter. Accordingly, the district court did not err in its grant of summary judgment without making a formal claim construction.

Alice analysis—step one. The appellate court noted that the first test to determine patent eligibility is whether the claim is directed to a patent-ineligible concept; that is, an abstract idea, law of nature, or natural phenomenon (Alice Corp. v. CLS Bank Int'l). In analyzing claims 23 and 32 of the '150 Patent, the court relied on Reese's stated purpose of his patent, as "to indicate to a subscriber to both call waiting and caller ID, who is already engaged in a call, using an audible tone signal, the existence of an incoming call from a third party whose directory telephone number has been flagged private." The court concluded that by Reese's own terms, the identified purpose of the claims is abstract. This conclusion was supported by the fact that the claims do not recite any particular method of receiving the information and sending the indicating tone in response. Further, although Reese argued that the claims required specific telephone features, the court stated that merely limiting claims to a particular technological environment did not make the claims any less abstract. Accordingly, the court held that claims 23 and 32 are directed to a patent-ineligible idea.

Alice analysis—step two. Step two of the Alice analysis allows proof of a sufficient inventive concept to transform a patent-ineligible abstract idea into be patent-eligible invention. Reese argued that "no successful combination of caller ID and call waiting yet existed," and that his "combination of known switching equipment with the steps" recited in the claims removes the claims from being abstract. Despite Reese's assertions, the court held that claims 23 and 32 of the '150 Patent do not contain an inventive concept. These claims recited functional language that failed to include any requirements for how the desired result was to be achieved, and did not note the use of any non-conventional equipment. Further, the claims at issue only recite steps that the '150 patent itself describes as prior art, that is, the sending of a call waiting signal when a phone number is flagged as private.

Accordingly, the appellate court affirmed the district court decision holding that claims 23 and 32 of the '150 patent were directed to patent-ineligible subject matter.

The case is No. 2018-1971.

Attorneys: Holly H. Barnes (Law Office of Holly Barnes, PC) for Morris Reese. Jay E. Heidrick (Polsinelli PC) for Sprint Nextel Corp.

Companies: Sprint Nextel Corp.

MainStory: TopStory Patent FedCirNews

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