Patent-Eligibility Can Be Deferred Until Claim Construction

Although many courts are often willing to rule on patent-eligibility under 35 U.S.C. § 101 at the pleadings stage, sometimes courts are more comfortable deferring the issue until claim construction. An interesting recent example is Mobile-Plan-It LLC v. Facebook Inc., no. 3:14-cv-01709 (N.D. Cal. April 20, 2015), where patent claims directed to a “method for organizing a meeting occurring at a physical meeting location, using software executing on a computer system” survived a motion for judgment on the pleadings under FRCP 12(c).

The court was persuaded that the patent owner “offered at least an argument that its patent offers more than a list of steps human beings were routinely carrying out long before the patent existed.” Although anonymous communications had been proxied long before the patent-in-suit, “the specific problem purportedly addressed by the’091 patent relates to characteristics of email communications, and to particular issues arising among conference attendees.” The court accepted the admonition of the U.S. Supreme court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. that the “abstract idea” test for patent-eligibility should not be applied too broadly. However, the court did express some skepticism about whether “this argument for the existence of an inventive concept will ultimately be sufficient, particularly on a fully-developed record.”