Mobile Telecomms. Techs., LLC v. United Parcel Serv., Inc.

• Decision Date: 24 March 2016
• Docket Number: CIVIL ACTION NO. 1:12–CV–3222–AT
• Citation: 173 F.Supp.3d 1324
• Parties: Mobile Telecommunications Technologies, LLC, Plaintiff, v. United Parcel Service, Inc., Defendant.
• Court: U.S. District Court — Northern District of Georgia

173 F.Supp.3d 1324

Mobile Telecommunications Technologies, LLC, Plaintiff,

v.United Parcel Service, Inc., Defendant.

CIVIL ACTION NO. 1:12–CV–3222–AT

United States District Court, N.D. Georgia, Atlanta Division.

Signed March 24, 2016

Anthony D. Seach, Craig S. Jepson, Daniel Scardino, Henning Schmidt, Ian Cohen, Joshua Gabriel Jones, Dominique Gelene Stafford, Reed & Scardino LLP, Chad Ennis, Sutherland Asbill & Brennan LLP, Austin, TX, Martha Logan Decker, Steven G. Hill, Hill Kertscher & Wharton, LLP, Atlanta, GA, for Plaintiff.

Robert L. Lee, Patrick J. Flinn, Siraj Mukund Abhyankar, Alston & Bird, LLP, Atlanta, GA, for Defendant.

ORDER

Amy Totenberg

, United States District Judge

This patent case presents the abstract question of what is meant by the word “abstract.” Plaintiff Mobile Telecommunications Technologies, LLC (“Mtel”) alleges that Defendant United Parcel Service, Inc. (“UPS”) infringed on Mtel's patented method for “provid[ing] prompt notification of delivery of an express mailing to the addressee thereof.” (Doc.1–1.) UPS filed a Motion for Judgment on the Pleadings [Doc. 145] arguing that Mtel has attempted to impermissibly patent the abstract idea of “notifying the recipient of an express mailing that the mailing is late” or that “it has been delivered.” (Doc. 145–2 at 1 (“Motion”).) For the following reasons, UPS's Motion is GRANTED .

I. STANDARD

“Judgment on the pleadings is appropriate when there are no material facts in dispute, and judgment may be rendered by considering the substance of the pleadings and any judicially noticed facts.” Hawthorne v. Mac Adjustment, Inc., 140 F.3d 1367, 1370 (11th Cir.1998)

(citing Fed. R. Civ. P. 12(c) ). The legal standard for assessing a motion for judgment on the pleadings is the same as the standard for a motion to dismiss under Rule 12(b)(6). Id. ; Roma Outdoor Creations, Inc v. City of Cumming, Ga., 558 F.Supp.2d 1283, 1284 (N.D.Ga.2008).

This Court may dismiss a pleading for “failure to state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6)

. A pleading fails to state a claim if it does not contain allegations that support recovery under any recognizable legal theory. 5 Charles Alan Wright & Arthur R. Miller, Federal Practice & Procedure § 1216 (3d ed.2002) ; see also

Ashcroft v. Iqbal, 556 U.S. 662, 677–78, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). In considering a Rule 12(b)(6) motion, the Court construes the pleading in the non-movant's favor and accepts the allegations of facts therein as true. See Duke v. Cleland, 5 F.3d 1399, 1402 (11th Cir.1993)

. The pleader need not have provided “detailed factual allegations” to survive dismissal, but the “obligation to provide the 'grounds' of his 'entitle[ment] to relief' requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). In essence, the pleading “must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face'.” Iqbal, 556 U.S. at 678, 129 S.Ct. 1937 (quoting Twombly, 550 U.S. at 570, 127 S.Ct. 1955 ).

II. BACKGROUND

Mtel owns United States Patent No. 5,786,748 (the “ '748 patent”)

, titled “Method and Apparatus for Giving Notification of Express Mail Delivery.” The patent covers, “inter alia, methods for providing notification of an express mail delivery to an addressee via wireless page messages.” (Compl.¶ 13.) More specifically, the patent claims the following:

. A method for providing notification of an express mail delivery to an addressee thereof, comprising the steps of:

(a) sending to an express mail tracking service an ID number assigned to an express mailing and a page number of a delivery notification recipient;

(b) relaying the ID page number and an appointed time to a paging operations center;

(c) providing a first indication to the paging operations center that the express mailing has been delivered to the addressee;

(d) providing a second indication to the paging operations center that the express mailing has not been delivered to the addressee by the appointed time;

(e) transmitting, responsive to the first indication a wireless page message to the recipient as notification of the express mailing delivery; and

(f) transmitting, responsive to the second indication a wire-less page message to the recipient notifying recipient that the express mailing has not been delivered by the appointed time.

2. The method according to claim 1 wherein the step of transmitting a wireless page message responsive to the first indication includes the step of transmitting a wireless page message that indicates a time that the express mailing was delivered.

. The method according to claim 1 wherein the step of transmitting a wireless page message responsive to the first indication includes the step of transmitting a wireless page message that indicates a name of a person that signed for the express mailing.

('748

Patent, Compl. Ex. A at 6.)

On September 14, 2012, Mtel filed suit against UPS, alleging that UPS “practices the methods claimed in the '748 patent

.” (Compl.¶ 15.) Specifically, Mtel alleges that UPS infringed on the '748 patent by assigning identification numbers to packages it ships and then using said numbers to both “offer[ ] package tracking services that provide information on the status of a shipment via Short Message Service (SMS),” (Compl.¶ 16), and provide “information to an intended package recipient including whether there has been a delivery exception, such as when a package delivery has been delayed.” (Compl.¶ 23.)

The Parties proceeded to claim construction, and the Court held a Markman hearing on July 3, 2013. On March 17, 2014, the Court issued its claim construction order. UPS then filed its motion for summary judgment on October 30, 2014, and the Special Master for this case issued his Report and Recommendation on March 25, 2015. On July 29, 2015, UPS filed the present Motion for Judgment on the Pleadings, arguing for the first time that Mtel's patent was invalid under Alice Corp .

, a 2014 United States Supreme Court case that continued that Court's recent trend of invalidating abstract method patents. While that motion perhaps could have been filed a bit sooner, the Court elected to entertain it given the likelihood that the issue would be raised at trial. (Order, Doc. 148.)

III. DISCUSSION

The Patent Act provides protection for those who “discover[ ] any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101

. This statute has long contained an important exception: “Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, ––– U.S. ––––, 134 S.Ct. 2347, 2354, 189 L.Ed.2d 296 (2014) (citations and quotation marks omitted). The exception exists because “[l]aws of nature, natural phenomena, and abstract ideas are the basic tools of scientific and technological work,” and “[m]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Id .

Of course, “too broad an interpretation of this exclusionary principle [might] eviscerate patent law” because “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature ... or abstract ideas.” Mayo Collaborative Svcs. v. Prometheus Laboratories, Inc., ––– U.S. ––––, 132 S.Ct. 1289, 1293, 182 L.Ed.2d 321 (2012)

.

Striking the proper balance in identifying those “abstract ideas” that are too ephemeral to be patentable is not an easy task, as courts have repeatedly observed. E.g., Bilski v. Kappos, 561 U.S. 593, 130 S.Ct. 3218, 3236, 177 L.Ed.2d 792 (2010)

(Stevens, J., concurring) (the Supreme Court has yet to “provide[ ] a satisfying account of what constitutes an unpatentable abstract idea”); DDR Holdings, LLC v. Hotels.com, LP , 773 F.3d 1245, 1255 (Fed.Cir.2014) (“[d]istinguishing between claims that recite a patent-eligible invention and claims that add too little to a patent-ineligible abstract concept can be difficult, as the line separating the two is not always clear.”)

In Alice Corp

., the Supreme Court identified a two part test to determine patent eligibility under Section 101. First, a court must first identify if the claim is directed at an abstract idea or other patent-ineligible concept. 134 S.Ct. at 2355. The Court looks at the claim elements both individually and in combination in determining whether a patent is aimed at an abstract idea Id. at 2355 n. 3 ; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.Cir.2014) (invalidating a patent where “the concept embodied by the majority of the limitations describes only the abstract idea” of showing an advertisement before providing free content).

Next, the Court must determine if the remainder of the claim adds an “inventive concept” that includes an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more” than the abstract idea itself. Alice Corp ., 134 S.Ct. at 2355

. “Simply appending conventional steps, specified at a high level of generality,” to the abstract idea is not enough to create a patentable invention. Id . at 2357.

A. Abstract Idea

The Court first addresses whether the '748 patent

is directed at an abstract idea. Method patents like the one at issue in this case present “special problems in terms of vagueness and suspect validity.” Bilski, 561 U.S. at 608, 130 S.Ct. 3218

. The trick is to try and 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) ( “It is the management of the life insurance policy that is 'integral to each of [Bancorp's] claims at issue', not the computer machinery that may be used to accomplish it.”) If that heart is a law of nature or...