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 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 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 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 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 Nice Systems Ltd. et al. v. Clickfox, Inc., Civil Action No. 15-743-RGA (D.Del. September 15, 2016), the Court granted Defendants’ motion to dismiss for lack of patentable subject matter after finding that (1) the asserted claims of the patent-in-suit, U.S. Patent No. 8,976,955 (“the ‘955 patent”) are directed to the abstract idea of cross-channel customer service; and (2) the independent claims of the ‘955 patent do not add any “inventive concept” to the abstract idea of cross-channel customer service.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Richard G. Andrews in Idexx Laboratories, Inc. v. Charles River Laboratories, Inc., Civil Action No. 15-668-RGA (D.Del., July 1, 2016), the Court denied Defendants’ motion to dismiss for failure to state a claim after concluding that the representative claim, claim 1 of U.S. Patent No. 8,927,298 (“the ‘298 patent”), includes the “inventive concept” of using DBS technology to monitor the health of rodent populations by analyzing blood for biomarkers of infectious disease.  The Court noted that “[t]he advances over the prior art are clear.  The invention permits one to monitor the health of rodent populations without euthanizing animals, waiting for blood to clot in a centrifuge, or shipping blood serum overnight in a refrigerated container.” Id. at *12.  Thus, the Court concluded that “[t]his inventive concept is sufficient to ‘transform the abstract idea . . . into a patent-eligible application of that idea.’” Id.

 A copy of the Memorandum Opinion is attached.

The general take away is that, under the Mayo/Alice analysis, the fact that a patent claims are drawn to a patent-ineligible concept such as an abstract idea does not end the inquiry.  One must then ask whether the claims provide an inventive concept.  An inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.

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 Order entered by The Honorable Christopher J. Burke in Kaavo Inc. v. Cognizant Technology Solutions Corp., Civil Action No. 14-1192-LPS-CJB (D.Del., April 9, 2015) (consolidated), the Court granted Defendants’ motion to stay the proceedings in the patent infringement action pending resolution of Defendants’ motions to dismiss which assert that the patent-in-suit, United States Patent No. 8,271,974 (“the ‘974 patent”), is not directed to a patent-eligible subject matter under 35 U.S.C. § 101.  In weighing the three applicable factors for evaluating a motion to stay, the Court found that simplification of the issues weighed slightly in favor of the stay, the status of the litigation (which is in its very beginning stages) weighed strongly in favor of the stay, and the undue prejudice factor weighed against the stay.  Id. at 2-11.  On balance, the Court concluded that the possibility of simplifying the issues of the case at a very early stage of the litigation was compelling enough to grant the stay under the circumstances.  Id. at 11.

A copy of the Memorandum Order 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.