District Courts Avoid Determining Patent Eligibility

How much evidence and claim construction does a court need to make a determination on eligibility under 35 U.S.C. § 101? According to district courts in California, it depends? In SkyHawke Techs. v. DECA Int’l, CV 18-1234-GW(PLAx) (C.D. Cal. Feb. 4, 2019), the Central District of California granted a motion for partial judgment on the pleadings under FRCP 12(c), admonishing Plaintiff to amend its complaint. In contrast, in Express Mobile v. Core and Theory, 18-cv-04679-RS (N.D. Cal. Jan. 29, 2019), the Northern District of California denied Defendants’ motions to dismiss, holding claims of U.S. Patent Nos. 6,546,397 and 7,594,168, could not be invalidated even after claim construction had occurred.

The SkyHawke plaintiffs asserted U.S. Patent No. 6,456,938 under 35 U.S.C. § 101, directed to golf course GPS devices, and pled that the ‘938 patent is eligible under 35 U.S.C. § 101. The defendants argued that claim 1 of the ‘938 patent is invalid under § 101 as an abstract idea without something more. In granting the motion, the Court noted the complaint was filed in 2011, predating crucial decisions on § 101 including Mayo Collaborative Servs. v. Prometheus Labs and Alice Corp. v. CLS Bank, but Plaintiff did not amend its complaint to address these decisions.

On the other hand, the Court seemed to admit that questions of fact remain, especially in light of Berkheimer v. HP, in which the Federal Circuit held that the question of whether elements are “routine” or “conventional” is one of fact. Moreover, such questions could not be resolved on a Rule 12 motion; notably, the Court wondered why “[Plaintiff] would put the burden on [Defendant] to submit evidence to support [the] position that that the claims recite only routine and conventional components” when “evidence outside the pleadings is not properly considered in the context of a motion at the pleading stage.”

Further, the SkyHawke Court considered Defendant’s arguments that Plaintiff’s claim constructions have changed and appeared unsure whether claim construction would affect patent eligibility. The Court granted the motion but felt that it was “premature to make a § 101 determination on the current record” because the “operative complaint does not include allegations that support” eligibility.

The asserted patents in Express Mobile are directed to building web pages as user-selected objects instead of complete code files, improving efficiency of storage for websites. Notably, the Court there relied on Enfish LLC v. Microsoft, Inc., to delineate between patents that use a computer to perform known tasks (which would likely fail under Alice) and patents that relate to the functioning of computers. This latter category is “substantially less easily characterized as merely abstract ideas.” Finding that the claims of the ‘397 and the ‘168 patents were directed to the functioning of computers, the Court held that the question of eligibility under § 101 simply could not be resolved on the record, so the motions to dismiss must be denied.

Lessons for Practice

The Court in SkyHawke, despite finding “no material issue of fact [that] remains to be resolved,” gave the Plaintiff another bite at the apple to plead facts supporting patent-eligibility. The court in Express Mobile hesitated to decide patent-eligibility even after claim construction had occurred. These two cases show how some courts go very slowly in deciding questions of patent-eligibility – and sometimes even seek to avoid the issue altogether.

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