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Parus Holdings, Inc. v. Sallie Mae Bank et al.

Representative Claim

  1. A computer and telecommunications network for receiving, sending and managing information from a subscriber to the network and from the network to a subscriber comprising:

at least one cluster, said cluster containing at least one voice server, said voice server containing telephony, speech recognition, text-to-speech and conferencing functions, such that said subscriber can access said cluster by a standard telephone connection or by a[n] internet connection;

at least one database server, said database server being connected to said cluster and containing contact lists and administrative data, such that said subscriber can manipulate and manage said data;

at least one file server, said file server being connected to said cluster; and

a web server, said web server being connected to said cluster such that said subscriber can access said network by connecting to said web server via the internet;

wherein said network can receive a message from said telephone connection or said internet connection and transmit said message to said subscriber by said telephone or internet connection, and said network can receive a message from said subscriber by telephone connection or internet connection and transmit said message by telephone connection or said internet connection based on commands received from said subscriber.

Posture:

Motion to dismiss.

Abstract Idea: Yes

The Court found that representative claim 1 of the ’600 Patent is directed to the abstract idea of automating tasks routinely and conventionally performed by humans in a business setting, stating:

“Although at the time of issuance the challenges addressed by the patents-in-suit undoubtedly were considered to be Internet-centric, under the current analytical paradigm (i.e., hindsight), the fact that there are pre-Internet analogs to the patent claims suggest methods of organizing human (business) activity and, therefore, an abstract idea.  See, e.g., Intellectual Ventures, 792 F .3d at 1368 (finding that the claims of the patent-in-suit were directed to the abstract idea of “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)”); Accenture, 728 F.3d at 1339, 1344 (determining that the patent claims were directed to the abstract concept of “generating tasks to be performed in an insurance organization”).

Notably, the Court’s analysis suggests that if the claim language can be mapped to one or more “pre-Internet analogs,” then it is likely to be considered an abstract idea, regardless of the state of the art at the time of the invention/filing.

Something More: No

Are the Claims Tied to Special-Purpose Computer?

The Court determined that the claims were not tied to a special-purpose computer, but merely recite generic computer components used for their basic functions.  Focusing specifically on the claim language, the Court noted:

In the case at bar, the claim language (informed by the specification) does not support plaintiff’s characterization of the computer components as specialized. buySAFE, Inc., 765 F.3d at 1355 (comparing the claims at issue to the computers in Alice and finding that the “computer functionality is generic” and “not even arguably inventive,” when it “receives and sends the information over a network-with no further specification.”). Indeed, the claims of the patents-in-suit do not reference any customization of the “compilation of hardware and software” described by the specification. See, e.g., Accenture, 728 F.3d at 1344-46 (finding that recitations of software components did not confer patent eligibility to claims directed to the abstract concept of “generating tasks to be performed in an insurance organization”).

Do the Claims Preempt the Abstract Concept?

The Court found that the recited claim features did not provide sufficient specificity to negate the risk of preemption, stating:

Organizing business functions based on commands provided by a user is tantamount to the automation of the management of business communications usually performed by human administrative assistants (the identified purpose of the invention). At best, the claims describe using known technology (voice recognition, telephone or Internet) to enable the “subscriber” to manage a network system made up of known communications components (e.g., telephone, fax, and answering machine) and computer components (e.g., servers and computers).

Do the Claims Satisfy the Machine-or-Transformation Test?

Plaintiff’s potentially persuasive arguments that the claims are directed to “unified messaging,” which provides the ability to “transform a particular communication into a different state or communication” were not seriously considered by the Court because “the patent does not claim the alleged transformations” (emphasis added).