Is Claim Construction a Prerequisite for Determining Patent Eligibility?

A court has denied a motion for summary judgment of invalidity based on Bilski v. Kappos, in part because the motion had been brought in advance of claim construction, and ahead of the court's normal schedule for dispositive motions.  Lendingtree, LLC v. Zillow, Inc., No. 3:10-cv-00439-W (W.D.N.C. June 4, 2012).  Calling the motion premature, the court relied on the fact that neither Bilski nor Dealertrack, Inc. v. Huber, 674 F.3d 1315, (C.A.Fed 2012), indicated that a patent-eligibility determination was necessary prior to claim construction.  Further, these issues had been considered concurrently in Dealertrack.  Accordingly, the defendants' motion was stricken, and could be raised later at an appropriate time.

The Lendingtree court clearly had other motivations -- defense counsel had represented an intention to bring a Rule 12 motion to dismiss based on a personal jurisdiction argument, and the court was not happy to see a Rule 56 summary judgment motion making substantive invalidity arguments instead.  That said, this case is worth noting for the court's clear statements concerning the appropriate timing of a motion for invalidity under 35 U.S.C.  § 101.

It is also worth noting, Dealertrack notwithstanding, that the Lendingtree court ignored considerable authority suggesting that Section 101 patent-eligibility questions can be decided without claim construction, often at the pleadings stage.  Defendants contemplating early motions arguing that claims are not patent-eligible would do well to consider this authority, including:

  • Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1059  (E.D. Mo. 2011) (claim construction is not necessary for determining patent-eligibility);
  • Nazomi Communications, Inc. v. Samsung Telecommunications, Inc., No. C-10-05545, 2012 U.S. Dist. LEXIS 39468  (N.D. Cal. March 21, 2012), at *10 (claims were patent-eligible but defendant's motion for invalidity under Section 101 was not premature);
  • Digitech Information Systems, Inc. v. BMW Financial Services NA, LLC, No. 6:10-cv-1373, 2012 U.S. Dist. LEXIS 44480 (M.D. Fla. March 30, 3012) (claim construction was unnecessary to a Section 101 analysis where “computer” was only term to which the plaintiff pointed as requiring construction for patent-eligibility analysis to proceed);
  • Graff/Ross Holdings LLP v. Fed. Home Loan Mortg., No. 07-796, 2010 U.S. Dist. LEXIS 141399 (D. D.C. Aug. 27, 2010), at *6-7 (court converted a motion to dismiss to a motion for summary judgment, but nonetheless found itself able to address, and grant, the motion without claim construction having taken place);
  • Glory Licensing LLC v. Toys “R” Us, Inc., No. 09-4252, 2011 U.S. Dist. LEXIS 51888 (D. N.J. May 16, 2011), at *2-3, 18 (court found that the patent claims at issue were “addressed to abstract ideas” without performing claim construction); and
  • IconFind, Inc. v. Google, Inc., No. 2:11-cv-0319, 2012 U.S. Dist. LEXIS 5460 (E.D. Ca. Jan. 18., 2012)(denying a motion for judgment of invalidity on the pleadings under Fed.R.Civ.P 12(c) without even mentioning the question of claim construction).