NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MORRIS REESE
Plaintiff-Appellant
v.
SPRINT NEXTEL CORPORATION
Defendant-Appellee
______________________
2018-1971
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:13-cv-03811-ODW-
PLA, Judge Otis D. Wright, II.
------------------------------------------------------
MORRIS REESE
Plaintiff-Appellant
v.
TRACFONE WIRELESS, INC., ERRONEOUSLY
SUED AS TRACFONE WIRELESS SERVICES INC.,
Defendant-Appellee
______________________
2018-1972
______________________
2 REESE v. SPRINT NEXTEL CORPORATION
Appeal from the United States District Court for the
Central District of California in No. 2:13-cv-05196-ODW-
PLA, Judge Otis D. Wright, II.
------------------------------------------------------
MORRIS REESE
Plaintiff-Appellant
v.
VERIZON WIRELESS SERVICES LLC,
ERRONEOUSLY SUED AS CELLCO
PARTNERSHIP, DOING BUSINESS AS VERIZON
WIRELESS,
Defendant-Appellee
______________________
2018-1973
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:13-cv-05197-ODW-
PLA, Judge Otis D. Wright, II.
------------------------------------------------------
MORRIS REESE
Plaintiff-Appellant
v.
AT&T MOBILITY II LLC
Defendant-Appellee
______________________
2018-1974
REESE v. SPRINT NEXTEL CORPORATION 3
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:13-cv-05198-ODW-
PLA, Judge Otis D. Wright, II.
------------------------------------------------------
MORRIS REESE
Plaintiff-Appellant
v.
T-MOBILE USA, INC.,
Defendant-Appellee
______________________
2018-1975
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:13-cv-05199-ODW-
PLA, Judge Otis D. Wright, II.
______________________
Decided: June 10, 2019
______________________
HOLLY H. BARNES, Law Office of Holly Barnes, PC,
Humble, TX, for plaintiff-appellant.
MICHAEL SONGER, Crowell & Moring, LLP, Washing-
ton, DC, for defendants-appellees TracFone Wireless, Inc.,
AT&T Mobility II LLC. Also represented by VINCENT JOHN
GALLUZZO, JOSHUA M. RYCHLINSKI. Defendant-appellee
TracFone Wireless, Inc. also represented by SHARON A.
ISRAEL, Shook, Hardy & Bacon, LLP, Houston, TX.
4 REESE v. SPRINT NEXTEL CORPORATION
JAY E. HEIDRICK, Polsinelli PC, Kansas City, MO, for
defendant-appellee Sprint Nextel Corporation.
KEVIN PAUL ANDERSON, Duane Morris LLP, Washing-
ton, DC, for defendant-appellee Verizon Wireless Services
LLC.
GREER N. SHAW, Hagens Berman Sobol Shapiro LLP,
Pasadena, CA, for defendant-appellee T-Mobile USA, Inc.
______________________
Before REYNA, HUGHES, and STOLL, Circuit Judges.
REYNA, Circuit Judge.
Morris Reese appeals from a grant of summary judg-
ment by the U.S. District Court for the Central District of
California determining that certain claims of the asserted
patent are ineligible under 35 U.S.C. § 101. The asserted
claims are directed to an abstract idea and the claim ele-
ments do not transform the nature of the claims into a pa-
tent-eligible invention. We affirm.
BACKGROUND
Morris Reese (“Reese”) owns and is the named inventor
of U.S. Patent No. 6,868,150 (“the ’150 patent”). The ’150
patent relates to an apparatus and method of providing call
waiting and caller ID service through the central office of a
telephone service provider. ’150 patent, Abstract. Reese
contends that Defendants, 1 who are cellular services pro-
viders, infringe claims 23 and 32 of the ’150 patent:
1 This is a consolidated appeal involving separate
cases and five different defendants: Sprint Nextel Corpora-
tion, TracFone Wireless, Inc., Verizon Wireless Services,
LLC, AT&T Mobility II LLC, and T-Mobile USA Inc.
REESE v. SPRINT NEXTEL CORPORATION 5
23. A method for indicating to a first party who
subscribes to a Custom Local Area Signaling Sys-
tem (CLASS) service including Caller Identifica-
tion (Caller ID) and who is engaged in a telephone
call conversation with a second party an incoming
call from a third party calling a telephone number
of the first party, comprising the steps of:
(a) receiving at a terminating central office
(TCO) of the fist [sic] party who subscribes
to said CLASS service including said Caller
ID and who is engaged in the telephone
conversation with the second party the
third party directory telephone number
(DN) flagged as private from an originating
central office of the third party, indicating
that said DN of the third party is not to be
disclosed at the first party called station;
and
(b) said TCO then sending a call waiting
(CW) tone signal to the first party, said CW
tone signal indicates to the first party the
incoming call from the third party.
....
32. A method for sending a call waiting (CW) tone
signal only to a first party who subscribes to a Cus-
tom Local Area Signaling System (CLASS) service
including Caller Identification (Caller ID) and who
is engaged in a telephone conversation with a sec-
ond party, comprising the steps of:
(a) receiving at a terminating central office
(TCO) of the first party who subscribes to
Defendants jointly moved for summary judgment in each
case. J.A. 736–41.
6 REESE v. SPRINT NEXTEL CORPORATION
said CLASS service including said Caller
ID and who is engaged in the telephone
conversation with the second party a call-
ing third party directory telephone number
(DN) flagged as private from an originating
central office of the calling third party indi-
cating that said received DN of the calling
third party is not to be disclosed at the first
party called station; and
(b) said TCO then sending said CW tone
signal to the first party.
’150 patent col. 10 l. 15–col. 11 l. 26.
The district court found that claims 23 and 32 of the
’150 patent are directed to patent-ineligible subject matter
and granted summary judgment in favor of Defendants.
Reese v. Sprint Nextel Corp., No. 2:13-CV-03811, 2018 WL
1737613, at *6 (C.D. Cal. Apr. 9, 2018). It reasoned that
even under Reese’s description of the claims’ purpose—“to
indicate to a subscriber to both call waiting and caller ID,
who is already engaged in a call, using an audible tone sig-
nal, the existence of an incoming call from a third party
whose directory telephone number has been flagged pri-
vate”—the claims were directed to an abstract idea. Id. at
*5–6. The district court further reasoned that the claims
did not recite “actual processes or necessary equipment” for
performing the claimed methods and failed to transform
the nature of the claims into something more than the ab-
stract idea. Id. at *6.
Reese appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
We review a district court’s grant of summary judg-
ment under the law of the regional circuit, here the Ninth
Circuit. See Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1146 (Fed. Cir. 2016) (citations omitted). The
REESE v. SPRINT NEXTEL CORPORATION 7
Ninth Circuit reviews summary judgment de novo. Hu-
mane Soc’y of the U.S. v. Locke, 626 F.3d 1040, 1047 (9th
Cir. 2010). Patent eligibility under 35 U.S.C. § 101 is re-
viewed de novo. McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016).
The Supreme Court’s two-step framework for patent el-
igibility requires us to consider (1) whether a claim is di-
rected to a patent-ineligible concept—an abstract idea, law
of nature, or natural phenomenon—and (2) if so, whether
the claim elements considered individually, or as an or-
dered combination, “transform the nature of the claim into
a patent-eligible application.” Elec. Power Grp., LLC v. Al-
stom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citing Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 216–18 (2014) (in-
ternal quotations omitted)).
I. Claim Construction
We first address Reese’s contention that the district
court erred by granting summary judgment without con-
struing the claims. See Appellant Br. 14. We disagree.
“Although the determination of patent eligibility re-
quires a full understanding of the basic character of the
claimed subject matter, claim construction is not an invio-
lable prerequisite to a validity determination under § 101.”
Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1349 (Fed. Cir. 2014). In
some cases, there is no claim construction dispute relevant
to the eligibility issue. Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1374 (Fed. Cir. 2016). In such cases, the
court can evaluate subject matter eligibility under § 101
without formal claim construction. Id.
Citing Aatrix Software, Inc. v. Green Shades Software,
Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018), Reese argues
that we should adopt his—the non-movant’s—proposed
claim constructions in evaluating subject matter eligibility.
Appellant Br. 14–15. Yet Reese proceeds to argue that
8 REESE v. SPRINT NEXTEL CORPORATION
Defendants’ proposed constructions are more specific, re-
quiring “a wired (rather than wireless or cellular) connec-
tion and a specific subset of analog signaling” that
transform “any alleged abstract idea” in the claims into an
inventive concept. Id. at 18–19. Reese also argues that if
the court adopted his admittedly broader constructions, the
claims nevertheless contain an inventive concept. Id. at 20.
As such, Reese contends that the claims recite patent-
eligible subject matter under either of the parties’ proposed
constructions and fails to provide any reasoning why any
claim construction dispute is relevant to the eligibility is-
sue. The mere fact that Defendants’ proposed construc-
tions might be more specific and therefore limited to a
particular technological environment does not transform
an otherwise abstract idea into a patent-eligible applica-
tion. See Affinity Labs of Texas, LLC v. DIRECTV, LLC,
838 F.3d 1253, 1259 (Fed. Cir. 2016). Nor does Reese argue
that any limitations, either alone or in combination, in any
of the parties’ constructions were anything but “well-un-
derstood, routine, [and] conventional activities previously
known to the industry.” Content Extraction, 776 F.3d at
1347–48. Accordingly, we determine that there is no claim
construction dispute relevant to eligibility and that we can
fully understand the basic character of the claims without
claim construction. The district court did not err in decid-
ing summary judgment without construing the claims.
II. Alice Step One
Under step one, we consider whether the character of
the claims in their entirety is directed to a patent-ineligible
concept. Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015). Claims 23 and 32 recite
a method for indicating to a first party engaged in a call
with a second party, an incoming call from a third party
with a private number, comprising the steps of receiving at
a TCO a third party DN flagged as private, and the TCO
then sending the CW tone signal to the first party. See ’150
REESE v. SPRINT NEXTEL CORPORATION 9
patent col. 10 l. 15–col. 11 l. 26. According to Reese, the
purpose of these claims “is to indicate to a subscriber to
both call waiting and caller ID, who is already engaged in
a call, using an audible tone signal, the existence of an in-
coming call from a third party whose directory telephone
number has been flagged as private.” Appellant Br. 26–27.
By Reese’s own terms, this identified purpose of the claims
is abstract.
The claims are directed to the abstract idea of receiving
information (a calling phone number flagged as private)
and sending an indication (an audible tone) to a party al-
ready engaged in a call. The claims do not recite any par-
ticular method of receiving the information and sending
the indicating tone in response. See Interval Licensing
LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018). The
claims here are akin to concepts of receiving and displaying
(indicating) information (an incoming call from a private
number) that fall into a familiar class of claims directed to
abstract ideas. See Elec. Power Grp., 830 F.3d at 1353. Alt-
hough Reese argues that the claims require specific tele-
phone features, merely limiting claims to a particular
technological environment does not render the claims any
less abstract. Affinity Labs, 838 F.3d at 1259. Accordingly,
claims 23 and 32 are directed to a patent-ineligible abstract
idea.
III. Alice Step Two
For the claims to be salvaged under step two, we search
for an inventive concept sufficient to transform the claims
into significantly more than the abstract idea itself. Con-
tent Extraction, 776 F.3d at 1347. Merely reciting the use
of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention. Alice, 573
U.S. at 223. Similarly, steps that generically recite the use
of a telephone network cannot confer patent eligibility. In
re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 615 (Fed.
Cir. 2016).
10 REESE v. SPRINT NEXTEL CORPORATION
Reese does not point to any non-generic telephone net-
work components and instead, asserts that “no successful
combination of caller ID and call waiting yet existed” and
that his “combination of known switching equipment with
the steps set forth” in the claims removes them from ab-
stractness. Appellant Br. 34–35. Yet despite Reese’s as-
sertion, the claims at issue only recite steps that the ’150
patent itself describes as prior art: sending a call waiting
signal when a phone number is flagged as private. See ’150
patent col. 2 ll. 6–8 (“If the directory telephone number is
flagged ‘private’, the terminating central office equipment
connects to the called party telephone line with ringing
only.”). And by the ’150 patent’s own terms, the claims do
not recite any non-conventional equipment. See, e.g., id. at
col. 1 l. 16–col. 2 l. 12 (describing conventional telephony
equipment and services). Further, the claims recite func-
tional language lacking “any requirements for how the de-
sired result is achieved.” Elec. Power Grp., 830 F.3d at
1355 (emphasis in original). Nothing in the claims requires
anything other than conventional telephone network
equipment to perform the generic functions of receiving
and sending information. Reciting an abstract idea and ap-
plying it on telephone network equipment is not enough for
patent eligibility. See Alice, 573 U.S. at 223. Accordingly,
the claims do not contain an inventive concept.
CONCLUSION
We have considered Reese’s other arguments and find
them unpersuasive. The district court correctly deter-
mined that claims 23 and 32 of the ’150 patent are directed
to patent-ineligible subject matter.
AFFIRMED
COSTS
No costs.