A Texas magistrate judge has found that two patents related to Voice over IP networking do claim patentable subject matter and has recommended denial of summary judgment of invalidity. Plaintiff Genband sued Metaswitch Networks over patents relating to networking and firewall systems in a voice over IP network. Claim 1 of U.S. Patent 6,772,210 recites a system that performs address translation on IP messages transmitted between two separate networks. Metaswitch argued that the ’210 patent was directed to the abstract idea of address mapping and translation and nothing more. The court disagreed. Citing the Federal Circuit’s DDR Holdings decision, the court held that even if claim 1 could be characterized as embodying an abstract idea, it is patent-eligible because it includes a combination of elements that amounts to more than the ineligible concept itself. According to the court, the claim recites two separate devices operating in two different IP networks, hence implementing the idea in context of a non-generic computer system. Genband’s U.S. Patent 7,047,561 claims a method for classifying IP packets based on their type and performing different operations on those packets. Here too, the court held that the claimed method was implemented in the context of a specific, non-generic computer system, and improved the functioning of the computer itself. The court also found that claimed elements such as the “computer network” were “the only reason one would perform the claimed method in the first place,” and these elements imposed a meaningful limit on the scope of a claim.
In a separate order, the court granted a motion to strike portions of Genband’s expert report relating to subject matter eligibility. The court noted that the section 101 challenge was a question of law and reliance on expert testimony was disfavored. The court further stated that the utility of expert testimony on subject matter eligibility is limited to supplying background facts about the nature of the art and the patents, similar to expert testimony in the context of claim construction.
Genband US LLC v. Metaswitch Networks Corp., No. 2-14-cv-00033, Dkt. No. 408 (E.D. Tex. Jan. 8, 2016) [Payne]