Three recent district court cases illustrate the viability, and the limitations, of bringing a motion to dismiss and/or for judgment on the pleadings, under Federal Rule of Civil Procedure 12, based on a failure of patent claims to define eligible subject matter under 35 U.S.C § 101. In each of these cases, courts considered the question of whether a Section 101 determination could be made prior to claim construction and fact discovery. The answer to this question is that a Rule 12 motion based on Section 101 can can provide an accused infringer with an early victory, but a defendant must be prepared to show that claims are invalid under any possible claim construction.
In a case where defendants prevailed on a motion for judgment on the pleadings under Rule 12(c), Judge Davis of the Eastern District of Texas held that claims directed to an inventory sales system were invalid. Clear With Computers, LLC v. Dick's Sporting Goods, Inc., No. 6:12-CV-674 (E.D. Texas Jan. 21, 2014). Where patent claims directed to a system for screening an equipment operator for impairment were at issue, Judge Hart of the Northern District of Illinois denied without prejudice a Rule 12(c) motion alleging Section 101 invalidity. Vehicle Intelligence & Safety LLC v. Mercedes-Benz United States LLC, No. 13 C 4417 (N.D. Ill. March 13, 2014). Similarly, Judge Seeborg in the Northern District of California denied a Rule 12(b)(6) motion, explaining that whether patent claims directed to manipulating DNA were directed to a non-abstract idea would require factual development and possibly claim construction. Genetic Techs. Ltd. v. Agilent Techs., Inc., No. CV 12-01616 RS (N.D. Cal. March 7, 2014).
The claims of U.S. Patent No. 8,266,015 are directed to querying an inventory system about a product, and determining and providing a list of customization options for the product. The plaintiff in the Clear With Computers case had argued that a consideration of Section 101 patent-eligibility was “premature prior to formal claim construction.” The court agreed that a Markman hearing was not here necessary, adopting for purposes of the present motion the plaintiff's proposed construction of the only relevant disputed claim term.
Judge Davis explained that patent-eligibility was not conferred merely by claiming “a computer implementation of a purely mental process that could otherwise be performed without the use of a computer.” The court quoted the defendants' re-writing of claim 1 of the ’015 patent as “performed entirely by a human, mentally or with pencil and paper” to support the conclusion that claim was not patent-eligible:
receiving, at a configuration engine of a computer system by a human, a query regarding a product included in an inventory; determining, by the configuration engine by a human, (i) a plurality of customization options associated with the product, and (ii) which customization options of the plurality of customization options are included in the inventory; preparing, by the configuration engine by a human, a list of the customization options determined to be included in the inventory; and providing, by the configuration engine by a human, the list of customization options for presentation.
The plaintiff had argued that the patent claim recited eligible subject matter because it met the machine-or-transformation test. The court disagreed. The recited “configuration engine” was indistinguishable “from a general-purpose computer.” Mere recitation of a general-purpose computer does not “satisfy the machine prong of the [machine-or-transformation] test.” Further, the “transformation prong” was not satisfied by the mere manipulation of data.
The claims of United States Patent No. 7,394,392 are directed to expert systems for screening equipment operators for impairments. The defendants contended that expert systems were “well-known types of general-purpose computers that can be specially programmed in order to perform any particular tasks.” Accordingly, the defendants relied on cases supporting the proposition “that the use of general computers to perform steps in a method or process will not remove a patent from attack as abstract.” The court could not say “at this stage of the proceedings . . . without equivocation whether or how computers are to be used in the ’392 Patent process.”
Accordingly, a Rule 12(c) motion could not be appropriately granted. Therefore, the motion was denied without prejudice. The court also noted that other “questions of patentability” were suggested by the briefs, e.g., under 35 U.S.C. § 112. However, “the Supreme Court and the Federal Circuit have been very clear in holding that issues of patentability are not to be conflated with, or result before, issues of eligibility are decided.”
U.S. Patent No. 5,612,179 recited claims directed to manipulating DNA. Here, citing Prometheus v. Mayo, the court explained that “correlations between genomic variation in non-coding and coding regions of DNA are unpatentable laws of nature.” The question here was whether the claims of the ’179 patent contained “sufficient 'inventive concept' to transform an unpatentable natural law into a patentable application of that law.” Disputed by the parties was “whether the additional steps described in the '179 patent—namely the use of a primer pair to amplify a non-coding intron sequence— amount to well-understood, routine, or conventional techniques at the time the patent was filed.”
Performing its Section 101 analysis under the clear and convincing standard required to grant a Rule 12 motion, the court turned first to the question of whether “the asserted claims of the ’179 patent preempt all practical applications of the natural law.” The court found that “given the alleged availability of alternative methods of genomic analysis, clear and convincing evidence is lacking that the '179 patent impermissibly ties up the relevant field.”
Further, the claims of the ’179 patent were not overly generalized, and did not, “as a matter of law, fail the machine-or-transformation test.” The defendant did “not dispute that a primer pair can constitute a machine.” Instead, the defendant argued that the patent defined “‘primer pair' too broadly to tie the claimed methods to a 'particular' machine.” However, the defendant did not make this showing by clear and convincing evidence. Accordingly, the defendant's motion was denied.