Ho-hum: More Rule 12 Motions, More Patent Claims Held Invalid Under 35 U.S.C. § 101

In the wake of Alice Corp. v. CLS Bank, court after court has held patent claims invalid for failing to recite patent-eligible subject matter under 35 U.S.C. § 101.  And courts are not waiting for claim construction or summary judgment to make their decisions, instead granting motions brought at the pleadings stage under FRCP 12.  Here are some recent cases that continue this trend (there is an exception in the Genetic Tech case below, but I do not believe the exception disproves the trend).

Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 1:10cv910 (LMB/TRJ) (E.D. Va. Oct. 24, 2014).  Claims of four patents (U.S. Patent Nos. 6,836,797, 7,631,065, 7,412,510, and 6,947,984 ) were directed to "software which allows telecommunications providers to track customer usage of computer network services."  The defendants successfully brought a motion for judgment on the pleadings under FRCP 12(c).  The courts held claims of all patents to be patent-ineligible.  Claim 1 of the '065 patent "amount[ed] to 'nothing significantly more than an instruction to apply the abstract idea' of correlating two network accounting records 'using some unspecified, generic' computer hardware."  Other claims were similarly broad and were directed to similar abstract ideas.

Wolf v. Capstone Photography, Inc., 2:13-CV-09573 (Oct. 28, 2014 C.D. Cal.).  The court found that claims of "practically identical" U.S. Patent Nos. 7,047,214 and 6,985,875 were "directed to the abstract idea of providing event photographs organized by participant, as applied using the internet."  U.S. Patent No. 7,870,035 added, to the '214 and '875 patents, "only the abstract idea of distributing free or reduced-price digital event photographs with embedded advertisements, again applied with basic computer technology."  The claims all "lacked an inventive concept that would make them patent-eligible applications of those ideas."  The defendants' motion under FRCP 12(c) for judgment on the pleadings was therefore granted.

Genetic Techs. v. Bristol-Myers Squibb Co., Nos. 12-394-LPS and 12-396-LPS (Oct. 30, 2014).  The broadest independent claim of United States Patent No. 5,612,179 "impermissibly claim[ed] a natural phenomenon," and the court granted defendants' motion to dismiss under FRCP 12(b)(6) with respect to this claim.  In particular, "correlations between variations in non-coding regions of DNA — formerly known as 'junk DNA' — and variations in coding regions of DNA — specifically, alleles — are natural phenomena."  No additional step saved the claim from patent-ineligibility.  However, "the Court will require additional assistance from the parties to apply the foregoing analysis to [claims of United States Patent No. 5,851,762] (and to the remaining claims of the '179 patent as well)," especially where claim 1 of the '762 patent alone recited ten steps.

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Functional Claiming After Williamson v. Citrix
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