IP Law Daily Claims for methods of monitoring information transmissions not patent-eligible
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Tuesday, August 16, 2016

Claims for methods of monitoring information transmissions not patent-eligible

By Thomas Long, J.D.

Patents directed to a method for transmitting message packets over a communications network claimed an ineligible abstract idea and lacked inventive concepts rendering the claims patentable, according to the federal district court in Wilmington, Delaware. Rather than being directed to providing a technological solution to a particular problem, the claims were directed to the unprotectable abstract idea of monitoring the delivery of audiovisual information. Infringement claims against cable service providers Comcast and Verizon were dismissed (Two-Way Media Ltd. v. Comcast Cable Communications, LLC, August 15, 2016, Andrews, R.).

Patents at issue. Two-Way Media Ltd. accused Comcast Cable Communications, LLC, Comcast Interactive Media, LLC (collectively, "Comcast"); NBCUniversal Media LLC, and NBCUniversal, LLC (collectively, "NBCUniversal"); and Verizon Services Corp. and Verizon Online LLC (collectively, "Verizon") of infringing U.S. Patent Nos. 5,778,187 ("the '187 patent"); 5,983,005 ("the '005 patent"); 6,434,622 ("the '622 patent"); 7,266,686 ("the '686 patent"); and 8,539, 237 ("the '237 patent"). The patents at issue were each entitled "Multicasting Method and Apparatus" and were directed to a "scalable architecture ... for delivery of real-time information over a communications network."

On August 1, 2016, the court granted a stipulation of dismissal without prejudice of the claims between Two-Way and NBCUniversal. On August 4, 2016, the court granted a stipulation of partial dismissal with prejudice of Two-Way's '237 patent infringement claims against Comcast and Verizon. Comcast and Verizon moved to dismiss the remaining claims with respect to the '187, '005, '622, and '686 patents, asserting that those patents were invalid for claiming ineligible subject matter under 35 U.S.C. §101.

The ’187 and ’005 patents. The ’187 and ’005 patents claimed a method for transmitting message packets over a communications network. Comcast and Verizon argued that the '187 and '005 patents were directed solely to the abstract idea of monitoring the delivery of information. According to the defendants, that idea represented a fundamental business practice similar to the idea of tracking a user's spending. They also contended that the patents lacked an "inventive concept" because the patents’ claimed "converting," "routing," "controlling," "monitoring," and "recording" steps did not, separately or as an ordered combination, amount to significantly more than an instruction to apply the abstract idea using a generic computer.

Two-Way responded that the '187 and '005 patents were directed to the concrete task of "audio/visual streaming in a packet-switched architecture that facilitates efficient and reliable transmission, while also implementing specific forms of monitoring and recordkeeping." According to Two-Way, the claims supplied an inventive concept because they contained elements directed to solving the technological problems of load, bottlenecking, and inadequate records.

The court found that the '187 and '005 patents were directed to the abstract idea of sending and monitoring the delivery of audiovisual information by (1) sending information, (2) directing the sent information, (3) monitoring receipt of the sent information, and (4) accumulating records about receipt of the sent information. The claims did not describe or refer to anything that could be called an "architecture," and the claims did not recite the mechanism by which the problems cited by Two-Way were solved. Therefore, the claims lacked an inventive concept. Accordingly, the ’187 and ’005 patents were invalid under 35 U.S.C. §101, the court concluded.

The ’622 patent. The ’622 patent claimed a method for monitoring the forwarding of real-time information to at least one user having access to a communications network. This patent also was directed to the ineligible abstract idea of monitoring the delivery of information. Limiting the claims to the particular technological environment of "real-time stream delivery over packet-based networks" was insufficient to transform them into patent-eligible applications of the abstract idea to which they were directed, the court said. The claims required nothing other than conventional computer and network components operating in an ordinary manner. Accordingly, the ’622 patent failed to meet the requirements of 35 U.S.C. §101.

The ’686 patent. The ’686 patent claimed a method for metering real-time streaming media for commercial purposes. Like the other patents at issue, the ’686 patent was directed to the abstract idea of monitoring the delivery of information and lacked an inventive concept, the court determined. The claims merely recited generic, conventional technology and generic concepts. Therefore, the court concluded that the ’686 patent also claimed ineligible subject matter.

The case is No. 1:14-cv-01212-RGA.

Attorneys: Joseph J. Farnan, III, Brian E. Farnan, and Michael J. Farnan, Esq. (Farnan LLP); Rachel S. Black, Brooke A.M. Taylor, and Jenna G. Farleigh (Susman Godfrey L.L.P.); and Michael F. Heim, Leslie V. Payne, Micah J. Howe, and R. Allan Bullwinkel (Heim, Payne & Chorush L.L.P) for Two-Way Media Ltd. Jack B. Blumenfeld and Paul Saindon (Morris, Nichols, Arsht & Tunnell LLP) for Comcast Cable Communications, LLC, Comcast Interactive Media, LLC, NBCUniversal Media LLC, and NBCUniversal, LLC. Brian Ferrall, Paven Malhotra, and David J. Rosen (Keker & Van Nest LLP) for Comcast Cable Communications, LLC and Comcast Interactive Media, LLC. Benjamin J. Schladweiler (Ross Aronstam & Moritz LLP) and Thomas M. Dunham, Kurt A. Mathas, and Sarah J. Kalemeris (Winston & Strawn LLP) for Verizon Services Corp. and Verizon Online LLC.

Companies: Two-Way Media Ltd.; Comcast Cable Communications, LLC; Comcast Interactive Media, LLC; NBCUniversal Media LLC; NBCUniversal, LLC; Verizon Services Corp.; Verizon Online LLC

MainStory: TopStory Patent TechnologyInternet DelawareNews

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