Claims Found Abstract and Ineligible Even Though USPTO Twice Confirmed Patentability During Prosecution

Electronic Communication Technologies, LLC v. ShoppersChoice.com, No. 2019-1587 (Fed. Cir. May 14, 2020)

The asserted patent claimed an automated notification system for providing advance notice to customers about the pickup or delivery of goods, along with information indicating that the notification was legitimate (e.g., a unique phrase or image). The district court granted the defendant’s motion for judgment on the pleadings, finding that the claim was “directed to the abstract idea of providing advance notification of the pickup or delivery of a mobile thing,” and thus invalid under 35 U.S.C. § 101.

Applying the two-step Alice/Mayo § 101 analysis, the Federal Circuit affirmed. At step one, the court found the claim was “abstract not only because it is a longstanding commercial practice, but also because it amounts to nothing more than gathering, storing, and transmitting information.” The court rejected the patentee’s argument that the claim was not abstract because it was “unique,” finding that uniqueness does not confer patent eligibility and that the features alleged to be unique (e.g., increasing security) were abstract. Further, it did not matter that the United States Patent and Trademark Office (USPTO) had “reconfirmed its finding that the claims were patent eligible” during prosecution, in response to the patent applicant asking the USPTO to “double-check its work on §101.” 

At step two, the court found the claim did “not include an inventive concept sufficient to transform the claimed abstract idea into a patent eligible application” because the claim “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.” The court rejected the patentee’s argument that the claim was eligible because it was enabled, reasoning, “just because a patent claim is enabled does not mean that the claim is patent eligible.” The court also rejected the argument that the district court erred by granting the motion without engaging in claim construction because the patentee “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.” Thus, in these circumstances, “the district court properly resolved patent eligibility at the pleadings stage of the proceedings.”

A copy of the opinion can be found here.