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Given the liberal amendment standard in federal court, it is not surprising that plaintiffs faced with § 101 challenges to their asserted patents may attempt to introduce factual issues through amended pleadings to avoid a dismissal.

Judge Connolly recently permitted the plaintiff in the consolidated Realtime Data litigation to amend its complaints after he had twice found plaintiff's patents (involving data compression) invalid under § 101. RealTime Data LLC v. Array Networks Inc., C.A. No. 17-800-CFC.
But the amendments were not enough to save plaintiff's patents, and Judge Connolly walked through the amendments to explain why.

First, the amended complaints asserted that certain claims were not representative of others, and that different limitations "must be considered separately for for the purposes of § 101." But these statements were deemed "conclusory," and in any event, the plaintiff failed to "explain why these limitations are relevant to subject-matter eligibility."

Second, he found that all but one of the "new" claim construction positions were already before the Court, and the remaining proposal (to construe "data accelerator" as "hardware or software with one or more compression encoders") conceded that the term "does not require any components beyond a generic processer [sic] that can run software."

Third, quotes from the specification did not create a factual dispute "because the patents were already in the record," and arguments about the PTO's consideration of prior art was "of no consequence" because the PTO "has always reviewed prior art in the course of issuing a patent before a district court rules on the patent's § 101 eligibility."

Fourth, citations to other cases with different outcomes were rejected because they were non-binding and had already been presented in briefing on the previous motion to dismiss.

Fifth, citations to patents that suggested data compression problems existed at the relevant time were not compelling because the Court had already considered them, and moreover, even if "there was a technical problem associated with compression, that does not imply that the claims in the asserted patents are directed to a subject-matter eligible solution."

Sixth, the complaint's statements that the invention could not be performed with a pen and paper was unavailing, because the claims "are still directed to the type of abstract data manipulation that is not patent eligible. Otherwise, a patentee could ensure subject-matter eligibility simply by including as a limitation that the invention cannot be performed on pen and paper or in the human mind."

It is unclear what might have been sufficient to convince the Court that these particular patents passed muster under Section 101, but it seems that targeted extrinsic evidence in the form of academic or scientific literature, or expert testimony, might have helped. But perhaps not—as Judge Connolly pointed out, the patents at issue simply did not contain "specific technical solutions":

The unavoidable problem for Realtime is that data compression by itself is a type of information processing and information processing, without more, is patent-ineligible subject matter. . . . The results-based claims describe desirable outcomes and functionality, but do not offer ways to achieve these results. . . . There can be a fine-and often unclear-line between applying an abstract idea on technology and claiming a software-based improvement to technology. But in my view, the line here is clear, and the asserted claims do not have the specificity required of a technical solution. . . . The patentee had ideas about data compression, but rather than claim specific implementations of those ideas or provide new techniques to achieve the claimed results, the patentee sought and received claims on the ideas themselves. The patents claim abstract ideas without teaching how to implement those ideas. This is what § 101 jurisprudence prohibits.

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