July 2019

No Technical Improvement Means No Patent-Eligibility

Here is a case illustrating a far from unusual scenario that also illustrates the morass of the current law of patent-eligibility under the Mayo/Alice test and 35 U.S.C. § 101. In NetSoc, LLC. v. Match Group, LLC, No. 3:18-CV-01809-N (N.D. Texas July 22, 2019), a district court easily granted a motion to dismiss, finding patent claims directed to online dating to be patent-ineligible under § 101. A little over a year prior, the U.S. Patent and Trademark Office had allowed the claims without making a § 101 rejection. Claims of U.S. Patent No. 9,978,107 are directed to “establishing a social network.” The court found the claims to be abstract, summarizing their focus as: (1) maintaining a list of participants, (2) presenting a user with a list of other participants based on selection criteria, (3) allowing the user to have limited contact with chosen participants, and (4) updating the rating of a participant based on tracked response times. Citing Federal Circuit decisions including SAP America, Inc. v. Investpic, LLC, 898 F.3d 1161 (Fed. Cir. 2018) and Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), the court characterized the claims as providing “results of data collection and… Read More »No Technical Improvement Means No Patent-Eligibility

Covenants Not to Sue Trigger Patent Exhaustion

The interaction of the patent exhaustion doctrine and covenants not to sue was highlighted in a recent opinion from the District of Delaware in Purdue v. Collegium. The court denied Collegium’s motion to dismiss, which was premised on Purdue’s covenant not to sue Collegium’s supplier. Purdue sued Collegium for infringing U.S. Patent Nos. 9,861,583; 9,867,784; and 9,872,836 with its pain-relief medication Nucynta. Separately, Purdue settled a patent-infringement suit with Assertio, another pharmaceutical company, which involved granting Assertio a covenant not to sue. The covenant not to sue extended to other entities interacting with Assertio, but Collegium was expressly carved out. The settlement affected this case because Assertio supplied Nucynta to Collegium under a commercialization agreement. That commercialization agreement provided that title to the product shifted from a contract manufacturing organization (CMO) directly to Collegium, never passing to Assertio. But the day after Assertio received the covenant not to sue as part of settling with Purdue, Collegium and Assertio amended the commercialization agreement so that title did transfer from the CMO to Assertio before transferring to Collegium. The court’s reasoning was based on interpreting this commercialization agreement against the background of the patent exhaustion doctrine. Generally, an authorized sale of a… Read More »Covenants Not to Sue Trigger Patent Exhaustion