By Memorandum Opinion entered by The Honorable Richard G. Andrews in Finnavations LLC v. Payoneer, Inc., Civil Action No. 18-444-RGA (D.Del. November 26, 2018) (consolidated), the Court granted defendants’ motion to dismiss under 35 U.S.C. §101 after concluding that the asserted claims of the patent-in-suit, U.S. Patent No. 9,569,755 (“the ‘755 Patent”), are directed to patent ineligible subject matter and do not contain an inventive concept.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Visual Effect Innovations, LLC v. Sony Electronics Inc., Civil Action No. 17-1276-LPS (D.Del. September 30, 2018), the Court denied Sony’s partial motion to dismiss the Complaint for failure to state a claim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure based on Sony’s contention that the asserted claims of U.S. Patent Numbers 9,699,444 (“the ‘444 patent”) and 9,716,874 (“the ‘874 patent”) are not directed to patent-eligible subject matter under 35 U.S.C. § 101.

The claims asserted from the ‘444 patent and ‘874 patent relate to the modification of image frames in a video stream. Id. at *1. In its complaint asserting patent infringement against Sony, Visual Effect Innovations, LLC (“VEI”) asserts that Sony makes TVs that modify image frames in a manner that infringe claim 26 of the ‘444 patent and claim 1 of the ‘874 patent. Id. In its motion to dismiss, Sony claimed that the asserted claims are invalid under 35 U.S.C. § 101 because they are directed to the abstract idea of image manipulation and do not contain an inventive concept “because the recited processor and storage elements are generic computer components, and the rest of the limitations do not result in the display of the recited images in any unconventional manner.” Id. at 10.

In denying Sony’s motion to dismiss, the Court found that Sony did not meet its burden to justify dismissal. Id. at *11. In other others, the Court could not conclude that, “taken as an ordered combination, the claims were well-understood, routine or conventional methods and apparatuses for image manipulation.” Id. Also, the Court noted that “the patent-eligibility inquiry could be impacted both by claim construction and by further factual development concerning the use of flicker described by the patents at the time of the inventions.” Id. Thus, the Court denied the motion without prejudice to Sony’s ability to raise another Section 101 challenge during the summary judgment stage of the case. Id. at *11-12.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Align Technology, Inc. v. 3Shape A/S et al., Civil Action No. 17-1646-LPS-CJB (D.Del. September 7, 2018) and Align Technology, Inc. v. 3Shape A/S et al., Civil Action No. 17-1647-LPS-CJB (D.Del. September 7, 2018), the Court denied defendants’ motion to dismiss in part in both actions with respect to the motion’s assertions that the Complaint failed to plausibly allege direct, indirect and willful infringement of the asserted patents under Rule 12(b)(6) of the Federal Rules of Civil Procedure. The Court granted defendants’ motion to dismiss in part in the 1646 action after finding that claim 1 of United States Patent Number 7,112,065 (“the ‘065 patent”) is directed to the “abstract concept of modifying a finish line of a dental prosthesis – – a concept well-known in the prior art” and, thus, is directed to patent-ineligible subject matter under 35 U.S.C. § 101. Id. at *22-27. The Court also granted defendants’ motion to dismiss in part in the 1647 action after finding that claim 1 of United States Patent Number 6,227,850 (“the ‘850 patent”) is directed to an abstract idea, does not include an inventive concept and, thus, is directed to patent-ineligible subject matter under Section 101. Id. at *27-32.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in IPA Technologies, Inc. v. Amazon.com, Inc. et al., Civil Action No. 16-1266-RGA (D.Del. March 31, 2018) (consolidated), the Court granted Defendants’ motions to dismiss as to claim 1 of U.S. Patent No. 6,742,021 (“the ‘021 patent”), claim 1 of U.S. Patent No. 6,523,061 (“the ‘061 patent”), and claim 1 of U.S. Patent No. 6,757,718 (“the ‘718 patent”) after finding that those claims are each drawn to an abstract idea and that none of them provide an inventive concept. In reaching its findings, the Court noted, among other things, that the subject claims are “aspirational in nature and devoid of any implementation details or technical description” that would permit the Court to conclude that any of the subject claims as a whole are directed to something other than the abstract idea of retrieving electronic data in response to a spoken request, and transmitting the retrieved data to a user. Id. at *18.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in 3G Licensing, S.A. et al. v. Blackberry Ltd. et al., Civil Action No. 17-82-LPS-CJB (D.Del. March 22, 2018) (consolidated), the Court granted Defendants’ motion pursuant to Federal Rule of Civil Procedure 12(c) for judgment on the pleadings that all the claims of U.S. Patent No. 6,212,662 (“the ‘662 patent”) are invalid under 35 U.S.C. § 101. The ‘662 patent is entitled “Method and Devices for the Transmission of Data with Transmission Error Checking” and “[t]he invention relates to a method for the transmission of data with transmission effort checking.” Id. at *1. In short, upon conducting the two step Alice/Mayo analysis, the Court found that the claims of the ‘662 patent were directed to an abstract idea and did not contain an inventive concept. Id. at *11-18. Thus, the Court held that the ‘662 patent is not patent eligible and granted motion for judgment on the pleadings on invalidity in favor of Defendants. Id. at *18.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in American Axle & Mfg., Inc. v. Neapco Holdings LLC et al., Civil Action No. 15-1168-LPS (D.Del. February 27, 2018), the Court granted Defendants’ Motion for Summary Judgment of Invalidity of U.S. Patent No. 7,774,911 (“the ‘911 patent”) after finding that it was directed to patent ineligible subject matter under 35 U.S.C. §101.

The ‘911 patent relates generally to shaft assemblies for transmitting rotary power in a driveline and more specifically to a method for attenuating driveline vibrations transmitted through a shaft assembly. Id. at *1-2. Many of the prior art liners attenuated the shell mode vibrations but did not also attenuate bending or torsion mode vibrations. Id. at *2. “The ‘911 patent purports to provide ‘an improved method for damping various types of vibrations in a hollow shaft,’ which facilitates the damping of shell mode vibration as well as bending mode vibration and/or torsion mode vibration.” Id.

In applying the two-part framework of the Alice test to the ’911 patent, the Court agreed with Defendants that (1) the claimed methods are simply the application of laws of nature, Hooke’s law, with the result of friction damping; and (2) the claims do not contain an inventive concept. Id. at *9-16. Thus, the Court found that the asserted claims of the ‘911 patent are not patent-eligible under 35 U.S.C. §101. Id. at *15.

A copy of the Memorandum Opinion is attached.

The takeaway is that drafters of patents for processes claiming patent ineligible subject matter – laws of nature, physical phenomena, and abstract ideas – should be mindful that their patent claims contain some additional features or inventive concept that provide practical assurances that the process is more than a drafting effort designed to monopolize the law of nature itself. Parties sued for infringement of patents that arguably involve laws of nature, physical phenomena and/or abstract ideas should carefully evaluate those patents to determine whether they meet the Alice test.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al., Civil Action No. 13-1632-LPS (D.Del. August 23, 2017) (consolidated), the Court denied Plaintiff’s motion for reconsideration of a prior Order of the Court and granted in part and denied in part Defendants’ motion for summary judgment.

Specifically, the Court denied Plaintiff’s motion for reconsideration of the Court’s December 30, 2016 Memorandum Opinion which granted Defendants’ motion for judgment on the pleadings that certain claims of U.S. Patent Nos. 6,115,737 (“the ‘737 patent”), 8,078,200 (“the ‘200 patent”), and 7,450,957 (“the ‘957 patent”) are patent-ineligible under 35 U.S.C. § 101. In denying Plaintiffs’ motion for reconsideration, the Court found that Plaintiffs failed to demonstrate an intervening change in controlling law, the availability of new evidence, or the need for the Court to correct a clear error of law or fact that warranted reconsideration. Id. at *1-14.

With respect to Defendants’ motion for summary judgment, the Court denied Defendants’ motion for summary judgment that claims 1, 7, and 8 of the ‘0032 patent are patent-ineligible under 35 U.S.C. § 101 after finding that those claims are not directed to an abstract idea and, thus, are patent eligible. Id. at *15-19. The Court granted Defendants’ motion for summary judgment that claims 17, 20 and 24 of the ‘490 patent and claim 17 of the ‘306 patent are patent-ineligible under § 101 after finding that those claims are not directed to patent-eligible subject matter. Id. at *19-27. The Court also granted Defendants’ motion for summary judgment that claims 1, 5 and 9 of the ‘352 patent are patent-ineligible under § 101 after concluding that those claims are not directed to patent-eligible subject matter. Id. at *27-33.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Jedi Technologies, Inc. v. Spark Networks, Inc. et al., Civil Action No. 16-1055-GMS (D.Del. August 3, 2017), the Court granted defendants’ motion to dismiss plaintiff’s patent infringement action under Federal Rule of Civil Procedure 12(b)(6) after finding that plaintiff’s patents claim ineligible subject matter under 35 U.S.C. § 101. Specifically, the Court found that the asserted claims of the patents-in-suit, U.S. Patent Nos. 7,885,977 (“the ‘977 patent”), 8,417,729 (“the ‘729 patent”), 8,930,406 (“the ‘406 patent”), and 9,432,315 (“the ‘315 patent”), are invalid under § 101 because each claim the abstract concept of matching online chatters based on criteria such as personality or location without providing the kind of meaningful limitations needed to make the subject matter patent-eligible. Id.at *12-13. In other words, the Court found that the patents-in-suit do nothing more than “recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Id.at *16.

Ultimately, the Court invalidated pursuant to 35 U.S.C. § 101 claims 1, 2, 4 and 5 of the ‘977 patent, claims 26, 27, 29, 30 and 31 of the ‘729 patent, claims 3, 4, and 6 of the ‘406 patent, and claims 1, 2, 3, 4, 6, 7, 8, and 9 of the ‘315 patent for claiming ineligible subject matter and having no inventive concept. See Order.

Copies of the Court’s Memorandum Opinion and Order are attached.

By Memorandum Order entered by The Honorable Sue L. Robinson in Paltalk Holdings, Inc. v. Riot Games, Inc., Civil Action No. 16-1240-SLR (D.Del. May 15, 2017), the Court denied Defendant’s Motion to Dismiss which asserted that dismissal of the Complaint was appropriate because the asserted patents do not claim patent eligible subject matter under 35 U.S.C. § 101. The patents-in-suit are U.S. Patent Numbers 5,822,523 (“the ‘523 patent”) and 6,226,686 (“the ‘686 patent”). The ‘523 patent and the ‘686 patent relate to distribution of messages between computers in interactive environments, such as online gaming. Id. at *1. The Court disagreed with Defendant’s assertions and found that the claims at issue are not directed to an abstract idea. Id. at *10.

A copy of the Court’s Memorandum Order is attached.

 

By Memorandum Opinion entered by The Honorable Richard G. Andrews in D&M Holdings Inc. et al. v. Sonos, Inc., Civil Action No. 16-141-RGA (D.Del. April 18, 2017), the Court granted Defendant’s Motion to Dismiss Plaintiff’s First and Third Counterclaims for Patent Infringement after finding that the asserted claims in the patents that are the subject of those counterclaims are drawn to abstract ideas and do not provide an inventive concept. Specifically, the Court found that U.S. Patent No. 7,343,435 (“the ‘435 patent”) is directed to the abstract idea of receiving, detecting, and storing information and does not provide an inventive concept. Id. at *9-12. The Court also found that U.S. Patent No. 7,305,694 (“the ‘694 patent”) is directed to the abstract idea of selecting a receiver connection for a piece of media based on the media’s encoding format and does not provide an inventive concept. Id. at *16-19.

A copy of the Memorandum Opinion is attached.