By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Tenon & Groove, LLC, et al. v. Plusgrade S.E.C., et al., Civil Action No. 12-1118-GMS-SRF (D.Del., March 11, 2015), the Court overruled the objections filed by plaintiffs and adopted the Report and Recommendation of Magistrate Judge Sherry Fallon to find the patents-in-suit invalid under 35 U.S.C. § 101 and to grant defendants’ motion for summary judgment. Significantly, in adopting Magistrate Judge Fallon’s Report and Recommendation, the Court agreed with Magistrate Judge Fallon’s finding that the patents-in-suit, U.S. Patent Nos. 7,418,409 (“the ‘409 Patent”) and 8,145,536 (“the ‘536 Patent”), are directed to patent-ineligible abstract ideas and fail the two-prong approach outlined in Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014), and other § 101 decisions. Id. at 2-9.
During its analysis, the Court noted that the Federal Circuit, in Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709, 714-715 (Fed. Cir. 2014), had already rejected plaintiff’s position that “abstract ideas remain patent-eligible under § 101 as long as they are new ideas, not previously well known, and not routine activity.” Id. at 6. The Court also agreed that the patents-in-suit failed to claim an “inventive concept” that renders the claims patent eligible. Id. at 7.
A copy of the Memorandum Opinion is attached.
The takeaway from this case is that a patent needs to recite more than generic computer implementation of an abstract idea to satisfy the two-prong approach of Alice Corp. There must be some “inventive concept” claimed in the patent that amounts to significantly more than the abstract idea itself to transform a patent-ineligible abstract idea into a patent-eligible invention.