Abstract Ideas Cannot Be Permitted To Burden The 'Basic Tools Of Modern-Day Commercial And Social Interaction'

In a case originally filed in 2012, Judge Amy Totenberg granted Judgment on the Pleadings in favor of United Parcel Service, Inc. ("UPS"), and against Mobile Telecommunications Technologies, LLC ("MTel"), relating to U.S. Patent No. 5,786,748 (the '748 Patent). The patent, filed in 1997 and issued on July 28, 1998, addressed a method to track packages and provide status information with text messages. This case has been the subject of two earlier blog posts: " Court Recognizes Alice Decision Potentially Impacts Case by Allowing LateMotion for Judgment on Pleadings" (Order of August 4, 2015) and " Court Delivers Markman Order in UPS Case On Order ofText Message Deliveries" (Order of March 17, 2014).

In reciting the standard for granting a Motion for Judgment on the Pleadings, the Court concluded: "In essence, the pleading 'must contain sufficient factual matter, accepted as true, to "state a claim to relief that is plausible on its face."'" Order, p. 2, quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009), quoting in turn Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007).

This case is unusual in that the July 2015 Motion for Judgment on the Pleadings followed a fully briefed Summary Judgment Motion on which a Special Master's recommendation had already issued (on March 25, 2015). Noting that the motion "perhaps could have been filed sooner," the Court nevertheless found the issue would likely be raised at trial and the Supreme Court case of Alice Corp. Pty. Ltd. v. CLS Bank Int'l, et al., 134 S. Ct. 2347 (2014), could be dispositive.

The Court recognized that "[s]triking the proper balance in identifying those 'abstract ideas' that are too ephemeral to be patentable is not an easy task." Undaunted, the Court undertook this task with regard to the '748 Patent, which claimed a method for providing notification by wireless communications of an express mail delivery undelivered by the appointed time.

In assessing whether MTel's patent addressed an abstract idea the Court tried to "detect the beating heart of the patent, its animating function." Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012).

The Court noted the two-part test identified by Alice. First, is the claim "directed to an abstract idea or other patent-ineligible concept." Alice at 2355. Second, does the claim add "an 'inventive concept' that includes an element or combination of elements that is 'sufficient to ensure that the...