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Judge Andrews invalidates Comcast patent for lack of patentable subject matter under 35 U.S.C. § 101

Judge Richard G. Andrews recently considered Sprint’s motion for summary judgment that Comcast’s U.S. Patent No. 6,873,694 is invalid under 35 U.S.C. § 101 for lack of patentable subject matter.  Comcast IP Holdings I, LLC v. Sprint Communications Company L.P., et al., C.A. No. 12-205-RGA (D. Del. July 16, 2014).  The  only asserted claim at issue was claim 21, which claimed:

A telephony network optimization method, comprising:

receiving a request from an application to provide to the application service on a
telephony network; and

determining whether a telephony parameter associated with the request requires
acceptance of a user prompt to provide to the application access to the telephony

Id. at 4.  Judge Andrews agreed with Sprint that “Claim 21 is ‘drawn to the abstract, and fundamental, idea of a conditional decision.'”  Id. at 5. Judge Andrews rejected Comcast’s argument that “‘[t]he claims do not simply recite making a conditional decision, but are narrowly directed to overcoming a specific problem of telephony networks by using telephony parameters to optimize bandwidth allocation on such networks.'”  Id.

Judge Andrews next determined whether the claim contained sufficient limitations restricting the otherwise abstract idea to a particular application.  Id. at 7.  Comcast argued that the claim contained such restrictions because claim 21 is “confin[ed] to the field of telephony.”  Id. at 8.  Judge Andrews disagreed:

Claim 21 merely covers the application of what has for a long time been conducted solely in the mind to modern, computerized, telephony networks. For instance, rather than an “application” requesting “service,” we can think of a “person” requesting a “telephone call.” The “person” makes a request through a telephone operator. The operator then looks to a “telephony parameter” associated with that request. Let us assume that the parameter is whether the call is “collect” or whether it is a standard call. Ifthe call is a standard call, the operator puts it through without a user prompt.2 I f the call is collect, the operator “determines” that the recipient will be asked to accept the charges. The operator has “determined” whether a “request” requires “acceptance of a user prompt.” The only difference is the identity of the requester. Here, the generic references to a telephony network and an application are not sufficient to render the claim patentable.

Id. at 9.


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