A “Clever” Patent on Routing Long-Distance Phone Calls is Held Invalid Under Section 101
On November 18, 2015, District Judge Colleen McMahon granted defendant Rubard LLC’s (“Rubard”) motion for summary judgment under 35 U.S.C. § 101, holding that U.S. Patent No. 7,346,156 (“the ’156 patent”) is invalid for claiming patent-ineligible subject-matter.
The ’156 patent is directed to methods and apparatuses for routing a long-distance call. The methods and apparatuses: detect an identity of a caller; receive an assigned incoming telephone number; identify a recipient associated with the assigned incoming telephone number and the identity; and connect the caller and the recipient. The court found that:
“[Claim 1] is directed to a well-known activity that is almost as old as telephony itself — making a long distance telephone call. What plaintiff did was figure out a way to make such a call more cheaply, by dialing a ten digit local number and nothing more. He combined two activities that have long been performed, by humans and by machines — caller ID and call forwarding — such that the recipient of a local call (area code plus seven digit number) uses some type of caller ID to recognize who the incoming caller is, and then forwards the incoming call to its intended recipient by associating the assigned incoming telephone number with a particular recipient's telephone number.”
The court further noted that neither claim 1 nor any of the asserted dependent claims recites any physical structure.
Under the first prong of the test set forth in Alice Corp. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014), the court concluded that the asserted claims are directed to the abstract idea “connecting two people via long distance telephony using caller ID and call forwarding.” Under the second prong, the court concluded that the asserted claims do not incorporate an “inventive concept.” According to the court, “the steps of ‘detecting,’ ‘receiving’ and ‘identifying’ recite nothing more that [sic] caller ID as it has long existed.”
The court accepted plaintiff’s characterization of the invention’s usefulness and commercial success, and even called the patentee “indubitably clever” for devising an “elegant solution to the problem of the calling card PIN.” However, the court explained, “under the Alice-Mayo test, not every clever solution to a problem — not everything that leads someone to exclaim ‘Eureka!’ — is eligible for patent protection.”
Case: Stanacard v. Rubard LLC, No. 12-CV-5176 (CM)(MHD), 2015 BL 384098 (S.D.N.Y. Nov. 18, 2015)