Argument Recap

Last week the Federal Circuit heard oral arguments in four cases that attracted amicus briefs. In the first of these cases,, Inc. v. Twitter, Inc., the court addressed patent eligibility. As we noted in our argument preview, the central issue related to whether a patent claiming a method and process for “automatically routing telephone calls and other communications in a multinetwork environment using a physical controller” covers mere abstract ideas not eligible for patenting. On Tuesday, March 3, the parties presented their arguments to a panel including Judges Newman, Lourie, and O’Malley. This is our argument recap.

Lewis Hudnell argued on behalf of (Voip). Before he was able to make any argument, however, the judges recognized that Hudnell was the attorney of record on the amicus brief filed in this case rather than on Voip’s brief. This required a brief clarification because no time had been granted to any amicus to present an oral argument. Hudnell explained that after filing the amicus brief, Voip decided to change counsel and contacted Hudnell.

Turning to his arguments, Hudnell argued that “Voip-Pal presents detailed factual allegations as to why the claims asserted both improve upon the prior art and cite an inventive concept,” which is contrary to what the district court held. Throughout the majority of his argument, Hudnell met consistent opposition from the judges about whether the claimed invention was actually abstract. The judges referred to alleged abstract language in the claims and consistently questioned where “the improvement” could be found. Hudnell responded by first referencing prior art, specifically a “dial 9 to get out of the building” routing technique. Hudnell then differentiated the patent claims from this prior art by explaining that the improvement is that the routing is based on the number dialed “plus information about the caller.”

In response to Hudnell’s explanation of the improvement covered by the claims, the judges asked whether the data- and information-location process is performed through “a physical process or through . . . software.” Hudnell answered that the process used a database. This prompted the judges to describe the claims at issue as an “abstraction on abstraction.” Hudnell again attempted to explain the improvement to the judges by explaining that the invention gathers the user’s information and then “evaluates the attributes in that profile against the number that was dialed . . . to make a determination of how to route the call.”

Mark Perry, arguing on behalf of Twitter, devoted the majority of his time to rebutting what Hudnell had argued. First, Perry explained that the alleged improvement identified by Hudnell is the same thing the district court said was an abstract idea. Further, Perry said that, “in this case, we have nothing more than a data gathering and matching system,” calling it a “generic module.” Second, Perry argued that very little had been mentioned about the claims because “the claims . . . contain no inventive concept.” This second argument prompted the judges to ask how a decision by the Patent Trial and Appeal Board impacted this case. Specifically, the judges asked: “What do we do with the fact that the Board thought this [invention] was non-obvious? Doesn’t that imply some inventiveness?” Perry responded that the Federal Circuit “has many cases where a previous Board determination of obviousness is not determinative of eligibility.”

The judges also asked whether claim construction should have occurred in this case. Perry explained that if Voip had asked for a construction, then there would have been one. According to Perry, however, Voip never asked for one.

In his brief rebuttal, Hudnell clarified that this case reached the Federal Circuit after a Rule 12 dismissal. Hudnell also stated that a request for claim construction was made in Voip’s brief.

We will monitor the case and report on its outcome.