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 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 Richard G. Andrews in Sonos, Inc. v. D&M Holdings Inc. et al., Civil Action No. 14-1330-RGA (D.Del. March 13, 2017), the Court denied Defendants’ Motion for Partial Judgment on the Pleadings for Lack of Patent-Eligible Subject Matter under Section 101 of the Patent Act, 35 U.S.C. § 101. The patents at issue in the motion were U.S. Patent Nos. 8,588,949 (“the ‘949 patent”), 7,571,014 (“the ‘014 patent”), 9,202,509 (“the ‘509 patent”), and 9,219,959 (“the ‘959 patent”). Id. at *2. Defendants moved for partial judgment claiming that those patents are directed to patent ineligible subject matter. Id.

After evaluation of Defendants’ motion and the patents at issue, the Court found that the patents at issue claim patent eligible subject mater and are not drawn to an abstract idea. Id. at *5-16. Thus, it was unnecessary for the Court to proceed past step one of the Mayo/Alice analysis for determining patent subject matter eligibility in reaching its conclusion. Id.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC et al. v. Symantec Corp. et al., C.A. No. 13-440-LPS (D.Del. February 13, 2017), the Court granted Defendants’ motion for summary judgment of patent ineligibility upon finding that the claims at issue – claims 25 and 33 of U.S. Patent No. 5,537,533 (“the ‘533 patent”) – (1) are directed to an abstract idea, and (2) fail to include any inventive concept sufficient to elevate them into patent-eligible applications of the abstract idea of backing up data. Id. at *3-11.

In so ruling, the Court agreed with Symantec that the claims at issue simply recite the basic steps of copying data from one location to another several times and sending a confirmation that the data has been received; and this is something humans and institutions have been doing for centuries, even before computers. Id. at *8. The Court also agreed that, although the claims invoke existing computer functionality as a tool to better back up data, the claims do not themselves purport to improve anything about the computer or network itself. Id. at *8-9. For example, unlike Enfish and McRo, the claims do not improve the way computers store information or otherwise function and do not otherwise provide an inventive concept. Id. Therefore, the court agreed with Symantec that the claims lack anything sufficient to transform the abstract idea into patent-eligible subject matter. Id.

A copy of the Memorandum Opinion is attached.

The general take away is that simply citing to generic computer components or functionality when describing an abstract idea, law of nature, or physical phenomena without some new, additional improvement, unique combination or something else that can be considered an inventive concept is not going to transform patent-ineligible subject matter into patent-eligible under 35 U.S.C. §101. Whenever a patent possibly claims an abstract idea, law of nature or physical phenomena, an analysis of the claims under the two-step process set forth in Mayo should be performed.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Novo Transforma Technologies, LLC v. Sprint Spectrum L.P., et al., Civil Action No. 14-612-RGA (D.Del., September 2, 2015) (consolidated), the Court granted Defendants’ motion for judgment on the pleadings of invalidity after applying the two-step framework provided in Alice Corp. Pty. v. CLS Bank Int’l, 134 S.Ct. 2347,2354 (2014) and finding that the claims of U.S. Patent No. 5,826,034 (“the ‘034 patent”) are drawn to patent-ineligible subject matter and do not provide an “inventive concept.”  Specifically, the Court found that “[t]he ‘034 patent claims the abstract idea of “translation”, the “claims do not solve a problem specific to the realm of computer networks, and the additional claim limitations do not amount to an ‘inventive concept.'”

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Inventor Holdings, LLC v. Bed Bath & Beyond Inc., Civil Action No. 14-448-GMS (D.Del., August 21, 2015), the Court granted Defendant Bed Bath & Beyond Inc.’s motion for judgment on the pleadings after finding that the patent-in-suit, U.S. Patent No. 5,862,582 (“the ‘582 patent”), is invalid under 35 U.S.C. § 101 because it claims a patent-ineligible subject matter (an abstract idea) and does not contain an “inventive concept” to meet the framework set forth in Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014).  In doing so, the Court found that “the ‘582 patent – and all of its seventy-three claims – are invalid under § 101, as they claim the abstract idea of paying for remote orders at local retailers, without reciting meaningful limitations to render the idea patent eligible.”  Id. at *6.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Tuxis Technologies, LLC v. Amazon.com, Inc., Civil Action No. 13-1771-RGA (D.Del., March 25, 2015), the Court granted Defendant Amazon’s Motion to Dismiss the patent infringement action for failure to state a claim after finding all claims of the patent-in-suit, U.S. Patent Number 6,055,513 (“the ‘513 patent”), invalid because they are drawn to a patent-ineligible subject matter.  Applying the two-step framework outlined in the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014), the Court found that (1) the claims of the ‘513 patent are directed to the abstract idea of “upselling,” which is a longstanding commercial practice; and (2) while limitations narrow the scope of the claims, the patent does not contain an “inventive concept.”  Id. at 4-9.

A copy of the Memorandum Opinion is attached.