In ruling on § 101 motions to dismiss, the Court typically adopts plaintiff's constructions outright, if plaintiff offers any. Those constructions may or may not be enough to avoid dismissal, but I can't recall any instance where the District of Delaware actually had to reject a construction as implausible under the FRCP 12(b)(6) standard.

Until now. In Synkloud Tech. v. HP, Inc., C.A. No. 19-1360-RGA (D. Del. Sep. 28, 2020), plaintiff tried to bake the § 101 "non-conventional" standard into the proposed claim construction. Clever! But Judge Andrews described the problems with that approach as "self-evident":

Plaintiff states that a person of ordinary skill …

As I mentioned earlier this week, I recently saw a fascinating article by James Bottomley relating a non-attorneys' view on patent trolls and a specific attack against GNOME, a well-known component of many open source Linux- and Unix-based operating systems.

The GNOME Foundation was sued in the N.D. Cal. by a Rothschild entity (a well-known NPE). The case involved what looks like a pretty typical NPE complaint, alleging infringement of a single patent. His article recounted his experiences and the settlement, and argues that the patent system is broken because of how hard it is to defend against these kinds of suits.

I wanted to take …

Judge Andrews issued two new decisions invalidating patents under § 101 on motions to dismiss. The patents at issue in B# On Demand LLC v. Spotify Technology SA, C.A. No. 19-2077-RGA, D.I. 24 (D. Del. Sept, 8, 2020) and Aegis 11 SA v. Belkin International, Inc., C.A. No. 19-1161-RGA, D.I. 24 (D. Del. Sept. 9, 2020) were the computer-centric sort that one might have expected to be invalidated at some point in the case, it was surprising to see them decided at a motion to dismiss stage—especially in light of Judge Connolly's decision earlier this week granting yet another motion to dismiss on 101 grounds.

Aren't § 101 Motions to Dismiss Supposed to Be …

The Federal Circuit today reissued its March 2020 opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc., which held a "method of preparation" claim relating to a natural phenomenon was patent eligible.

The reissue follows a petition for rehearing.

The patents involve a method for preparing a fetal DNA sample using a blood sample from a pregnant mother, by sorting the DNA fragments and removing the smaller ones using a size threshold.

The Original Bucket-Based Analysis

The Court originally described how it has consistently rejected "natural phenomenon"-related claims that fall into a "diagnostic" bucket, but has permitted method of treatment claims:

This is not a diagnostic case. And it is not a method of …

In an R&R this week, Judge Fallon recommended granting a § 101 12(b)(6) motion to dismiss.

She rejected a proffered expert declaration regarding novelty of the invention, because "the court declines to consider matters outside the pleadings on a Rule 12 motion to dismiss."

She noted that "[t]he law is now well-established that patent eligibility is a threshold issue." So far she has recommended granting three § 101 motions to dismiss this year, out of four that she has addressed.

The § 101 issues addressed here were not unusual. The patent, originally held by LG and now by NPE Aegis 11 S.A., sets forth an algorithm for using random numbers to authenticate mobile …

A few weeks ago, I suggested that, despite Berkheimer, courts are still taking § 101 motions to dismiss seriously when the facts warrant it. The Federal Circuit just affirmed the grant of one such motion in Data Scape Ltd. v. W. Dig. Corp., No. 2019-2161, 2020 U.S. App. LEXIS 20630 (Fed. Cir. July 1, 2020).

Reading Data Scape, it is interesting that the Court was able to shortcut the Alice Step 1 analysis by simply citing a 2016 Federal Circuit decision holding that the exact idea at issue—"the concept of delivering user-selected media content to portable devices"—was abstract.

In my view, this is one way that, over time, § 101 motions are …

In a brief § 101 opinion today, Judge Andrews denied a MTD based solely on Alice step 2. He relied primarily on allegations in the complaint that various claimed features of the invention were not routing or conventional:

Plaintiff . . . alleges in its amended complaint that the [asserted] claims incorporate “inventive concepts that were not well-understood, routine, or conventional at the time” of invention. . . . For example, the amended complaint alleges that some claims teach ways of displaying performance parameters so that users of both live and archived classes can compete with one another. . . . The amended complaint alleges that these functionalities were nonroutine and unconventional at the time of the invention and helped …