Federal Circuit on the left vs. Federal Circuit on the right. Will we get to see round 2?Charl Folscher, Unsplash
We talked a couple of days ago about how, in Longbeam Technologies LLC v. Amazon.com, Inc., C.A. No. 21-1559-CFC (D. Del.), Chief Judge Connolly stayed the action after raising plaintiff's inadequate disclosures at a § 101 hearing.
But, at the same hearing, plaintiff actually prevailed on the § 101 motion—and Chief Judge Connolly made some notable comments about how the Federal Circuit has responded to his previous § 101 decisions, and what that means for cases going forward.
Case 1, Universal Secure: Affirmed
The first case, Universal Secure Registry LLC v. Apple Inc., …
Back in February, Judge Andrews granted a motion to dismiss a patent with claims directed to the abstract ideas of "the recording, storing, delivering, and deleting of media content on a mobile device," and "remote control" of a mobile device. Clear Doc, Inc. v. RiversideFM, Inc., C.A. No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022).
He dismissed the claims on § 101 grounds, but granted leave to amend on the theory that the patentee could show an inventive concept:
Riverside's motion to dismiss is granted. Dismissal is without prejudice. OpenReel has requested leave to amend. (D.I. 46 at 19 n.1). I will grant that request, as it is possible OpenReel could successfully amend its complaint.
Clear Doc, Inc. v. RiversideFM, Inc., Civil Action No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022)
Id. at 19.
Taking the Court up on its offer, plaintiff amended their complaint to allege that certain feature constituted "inventive functions" under Alice—but the Court wasn't buying it:
The FAC has not alleged facts supporting the conclusion that the claims contain an unconventional technological solution as opposed to an abstract idea ...
We've talk before about how accused infringers so often give short shrift to the representative claims issue in § 101 briefing, and how it deserves a lot of attention if you want to prevail on a § 101 motion to dismiss.
Judge Burke issued an R&R yesterday, following his recent § 101 day, invalidating one claim of an asserted patent—but declining to hold 27 other claims valid, citing the accused infringer's poor representative claims argument:
I will note that I [have] been reviewing Section 101 motions like these for most of my entire 11 years as a judge[;] during that time, I have resolved many, many such motions. But I cannot recall ever having seen …
"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 …
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 …
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.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.
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, ...
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 …
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 …
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