A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: § 101

"The white one in the middle is representative..." Andrew E. Russell, CC BY 2.0

This week, Judge Noreika denied a § 101 motion because it challenged more than 60 claims, and because the parties disagreed as to whether any claims were representative:

WHEREAS, Plaintiff’s [§ 101] motion does not precisely specify which claims’ eligibility it is challenging . . . , but in any event details challenges to more than sixty claims’ eligibility . . . without any agreement about representativeness . . . ;
WHEREAS, should this case proceed to trial, the asserted claims will be narrowed through the parties’ disclosures and discovery and, as such, most of the claims subject to the Plaintiff’s § 101 motion will not …

Plaintiff Trident Holdings, LLC at oral argument, pointing to a claim construction
Kedar Gadge, Unsplash

Having a legitimate claim construction dispute that would lead to subject matter eligibility is a great way to survive a § 101 motion. Ideally, obviously, that argument should be set forth in an answering brief. But an opinion yesterday describes how a patentee was able to avoid a negative result on its § 101 motion through claim construction arguments offered at oral argument:

[Plaintiff] Trident suggested for the first time at oral argument that the “optimization engine” and “adaptive scoring” limitations required construction before the Court decides eligibility. . . . That claim construction wasn’t expressly raised until the oral argument suggests that [Trident] may not have actually thought there was a claim construction issue …

Disappointment Ice Cream
Sarah Kilian, Unsplash

Back in 2019, the parties in C.R. Bard, Inc. v. AngioDynamics, Inc., C.A. 15-218-JFB-SRF (D. Del.) went to trial on infringement claims for a patent involving a "means of identification" of certain medical devices.

During trial, at the close of plaintiffs' case, visiting Judge Bataillon granted an oral FRCP 50(a) motion for JMOL for the defendant (wow!), finding that the patent was ineligible as directed to an abstract idea involving labeling and printed matter.

The Federal Circuit later reversed, holding that the claims were patent eligible. Defendant then sought rehearing en banc, arguing that the panel's determination that the claims were patent eligible would cut off its ability to present other ineligibility arguments …

Conventional components arranged in an unconventional way.
Conventional components arranged in an unconventional way. Devilz, Unsplash

Judge Burke today denied a § 101 motion to dismiss relating to a patent with a single, lengthy claim related to a new type of system-on-a-chip (SOC) that eliminates redundant components by using multiple "media processing units."

The claim sets out the structure of the apparatus, including that the media processing units have certain features and functions:

1. An apparatus for processing data, comprising:
a plurality of media processing units, each . . . :
a multiplier . . . ;
an arithmetic unit . . . ;
an arithmetic logic unit . . . ; and
a bit manipulation unit . . . .
each of the plurality of media processors for performing
at least one . . . operation comprising:
receiving . . . an instruction . . . ;
receiving . . . input/output data . . . ;
processing the data . . . ; and
providing at least one . . . result . . . .

Judge Burke found that the claims were not directed to the abstract idea ...

All six challenged patents survived Judge Stark's most recent § 101 Day, held on November 22, 2021. The six patents were spread across three cases. Continuing his usual practice, Judge Stark ruled from the bench after hearing argument in all three cases, and then issued a written order (see below) incorporating the transcript of his bench ruling and the formal orders on the pending motions.

DNA
DNA DNA, ANIRUDH, Unsplash

In the first case, considering Step One of the Alice framework, Judge Stark found that the challenged patent was not directed to the abstract idea posited by the defendant ("an algorithmic method of manipulating and combining genetic sequence data using an [intermediate] data set") and instead "enables the identification of mutations with positional accuracy in a computationally tractable manner," solving a prior art problem - notably, that sequence assembly providing for accurate detection of variants was often computationally intractable for high-throughput analysis.

Judge Stark denied the motion to dismiss based on the Step One analysis.

In the second case, Judge Stark took the somewhat unusual path of deciding Step Two of the Alice test before Step One. He explained:

The Federal Circuit has employed a similar approach and resolved 101 issues at Step Two in several of its cases, ...

You know what they say about eggs in baskets...
You know what they say about eggs in baskets... Natalie Rhea, Unsplash

In a making a motion to dismiss for ineligibility under § 101, the moving party often seeks an ineligibility finding for all claims by attacking a single independent claim and arguing that it is "representative" of the others.

This can be a powerful briefing technique, as it avoids a repetitive slog through multiple asserted claims. Beyond that, it has the practical effect of shifting the burden to the patentee—to some extent—to show that the other asserted claims are different.

A short opinion yesterday by Judge Andrews, however, shows one downside of the representative-claim approach on a § 101 motion to dismiss. If you lose the argument …

We dug up a transcript.
We dug up a transcript. Jon Butterworth, Unsplash

Last week, in deciding a renewed motion to stay pending a § 101 motion to dismiss, Judge Burke commented on the likelihood of success of such motions:

The Court, having reviewed the parties' letters relating to Defendant's request to renew its motion to stay, . . . hereby ORDERS that the request is DENIED. . . . [I]n light of the circumstances here (including the statistical unlikelihood of prevailing on a Section 101 motion to dismiss as to each of the four separate patents−in−suit), the Court concludes a stay is not warranted.

Defendant had renewed the motion to stay after Judge Burke denied it in late April. That transcript was …

Server
electronic wire lot photo, Massimo Botturi, Unsplash

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 ...

Ridesharing
Brecht Denil, Unsplash

Magistrate Judge Hall issued a § 101 R&R today in Rideshare Displays, Inc. v. Lyft, Inc., C.A. No. 20-1629-RGA-JLH (D. Del.), recommending denial of defendant Lyft's motion to dismiss based on § 101.

The Court found that the patent was not directed to an abstract idea—though it noted that it was a close call—and that, regardless, the invention contained an inventive concept under Step 2 of Alice.

We've all read about dozens (or more) of § 101 opinions over the last few years, but here are a few points of interest from Judge Hall's opinion:

  • Judge Hall closely examined the representativeness of the alleged representative claim, and rejected it as unrepresentative. Choose …

We've written several times about Judge Stark's practice of holding "101 days." For the uninitiated, these are day-long hearings in which the court hears argument on multiple 101 motions from unrelated cases in a single, combined hearing. He has continued this practice throughout the pandemic, holding telephonic 101 days roughly once a quarter since July 2020.

He held another one last Friday, and he issued his written rulings earlier today. This time, he addressed three 12(b)(6) motions covering a total of four patents.

F45 Training Pty Ltd. v. Body Fit Training USA Inc. (C.A. No. 20-1194-LPS)

The claims were "directed to the abstract idea of storing, sending, and retrieving information over a network." Judge Stark found that this …