Richards Layton & Finger
 

Judge Andrews Invalidates Patent on Section 101 and Anticipation Grounds

November 13, 2017

In Broadsoft, Inc. v. CallWave Communications, LLC, C.A. No. 13-711-RGA (D. Del. Oct. 1, 2017), a declaratory judgment action, Judge Andrews granted Broadsoft, Inc.’s motion for judgment on the pleadings and for summary judgment that the patents asserted by the defendant, CallWave Communications, LLC, were unpatentable and anticipated.

To decide Broadsoft’s motion for judgment on the pleadings of unpatentability, Judge Andrews divided the challenged claims into two groups, finding one claim from each patent representative of each group. The Court agreed with Broadsoft that “sequentially dialing a list of telephone numbers” was an abstract concept that added nothing to existing technology. According to Judge Andrews, “[t]he ‘problem’ addressed by the claims is a human unavailability problem, rather than a problem specific to telephony technology.” Furthermore, the Court concluded that the claims in this group relied on industry standards and did not represent an advancement to telephony technology, and thus lacked an inventive concept.

Judge Andrews found that the second group of claims challenged on the basis of patentability was likewise directed to an abstract idea. The Court found that the inventive concept identified by CallWave—network interoperability—was neither the problem recited by nor the solution described in this group of claims. Judge Andrews further concluded that the technology recited in these claims was well known, and that considering the claim “as a whole,” as CallWave suggested, did not reveal an inventive concept. As a result, Judge Andrews found both groups of claims unpatentable under Section 101.

On Broadsoft’s motion for summary judgment of invalidity, the Court found that earlier versions of the accused product included a feature asserted to be prior art, and that license agreements, marketing information, and the subsequent release notes’ failure to indicate the removal of the relevant features showed that the prior art features in those versions were publicly known and on sale under 35 U.S.C. § 102. Based on a demo version of the earlier system, Judge Andrews found there to be no disputed issue of material fact that the accused product was identical in relevant respects to the earlier, prior art version. For these reasons, the Court found the challenged claims invalid.

Key Point: The Supreme Court’s decision in Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), continues to generate challenges to patentability.