The Central District of California recently denied a motion to dismiss on patent eligibility under 35 U.S.C. § 101 because a question of fact remained unresolved. In MoviePass, Inc. v. Sinemia, Inc., No. CV 2:18-1517 (C.D. Cal. Apr. 5, 2019), the Court held that the question of whether claims of U.S. Patent Nos. 8,484,133 and 8,612,235 are eligible under Section 101 required additional fact finding under the Federal Circuit’s 2018 decisions in Berkheimer v. HP and Aatrix v. Green Shades,.
Plaintiff MoviePass asserted the ‘133 and the ‘235 patents against Defendant Sinema. The patents are directed to identifying an authorized user’s identity based on the location of a mobile device and, once the user’s identity is verified to be near a chosen movie theater, providing funding to the authorized user to purchase movie tickets.
Defendant filed a motion to dismiss under FRCP 12(b)(6), alleging that the claims of the asserted patents were ineligible under Section 101. Applying the two-part eligibility test of Mayo Collaborative Servs. v. Prometheus Labs and Alice Corp. v. CLS Bank, Defendant alleged that the claims were directed to the abstract idea of verifying a user’s identity based on a request originating from a user’s phone being geographically located near a chosen movie theater, and that the patents relied on generic computer components that did not provide an inventive concept. Plaintiff alleged that the claims were directed to the technical solution of allowing a user to view a film without the theater operator confirming the identity of the user.
The Court, applying the first step of the two-part Alice/Mayo test, held that the claims were directed to an abstract idea, noting that the claimed process has been used by “parents…to first determine what [requested] money is for and when and where the chosen activity will take place.” Unconvinced by Plaintiff’s argument that the user’s phone acts as a proxy for the identify of the user, the Court noted that a parent “may drive through the movie theater parking lot looking for their son’s car, assuming that the vehicle’s presence is a reasonable proxy for his own.” The Court further held that the claims were not directed to a technical solution, but rather to replacing a traditional method for identifying a user with use of a computer.
For the second step, the Court considered whether the claims recited an “inventive concept.” The Court was skeptical that the alleged inventive concept of using the phone to identify the user without relying on theater operators to confirm the user’s identity was “anything more than well-understood, routine, or conventional to a skilled artisan.” However, the Court held that, based on recent decisions in Berkheimer v. HP and Aatrix v. Green Shades, there remained unresolved questions of fact. Specifically, the Court requested further fact finding on how one of ordinary skill in the art would have viewed the alleged inventive concept at the time of the invention. Because this unresolved question of fact remained, the Court denied Defendant’s motion to dismiss.
Lessons for Practice
Here we see a California court deny a motion to dismiss on patent eligibility, which is a change from recently granted requests that admonished parties to amend pleadings to include more facts. The parties here seem to have provided ample pleadings to help the Court decide eligibility, and the Court simply applied Berkheimer and Aatrix to ask the parties fill in specific factual gaps for the second step of the Alice/Mayo test.