Single Patent Yields Two Results (for now) on the Question of Patent-Eligibility

A court held one independent claim of U.S. Patent No. 8,332,475 patent-eligible, and another not, in Triplay, Inc. v. Whatsapp Inc., No. 13-1703-LPS (D. Del. April 28, 2015). Alleging that claimed subject matter encompassed an abstract idea, and thus that patent claims were invalid under 35 U.S.C. § 101, the Defendant had moved for dismissal for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6).

The ‘475 patent describes a system and method for converting electronic messages between platforms. Independent claim 1 recites a system for message communication including an “access block” for receiving and transmitting messages and a “media block” for selecting and converting message formats. Independent claim 12 recites a method for operating the system described in claim 1, without mentioning either of an “access block” or a “media block.” The Court dismissed the complaint regarding claim 12, holding that it was directed to an abstract idea. However, the court at least deferred a patent-ineligibility finding of claim 1, holding that further claim construction of the terms “access block” and “media block” were necessary before determining whether the claim was directed to non-statutory subject matter.

Judge Burke analyzed the question of an “abstract idea” under the familiar two-step analysis explained by the Supreme Court in Mayo v. Prometheus and Alice Corp. v. CLS Bank Int’l. That is, the court first determines whether the patent claims are directed to an abstract idea and, if so, then determines whether the claims contain an inventive concept. Should a claim be directed to an abstract idea, but nevertheless contain an inventive concept as defined by the additional elements apart from the abstract idea that also does not preempt too much future use of the abstract idea, then the claim is deemed to be patentable.

As for claim 12, the court drew parallels with the claim at issue in Ultramericial, Inc. v. Hulu, LLC, deciding that the method as described in claim 12 “did not have any concrete form, [or] specify a structure for the message, [or] specify how the message is received or delivery is facilitated.” Therefore, claim 12 was directed to nothing more than “the idea of ‘converting’ a message from one layout to another, [without specifying] how the layout is converted.” Furthermore, the court found that claim 12 “does not purport to limit itself to a specific way of converting a message from one layout to another,” but rather preempts future use of the abstract idea. As a result, the complaint regarding claim 12 was dismissed because the claim failed Alice’s two part test for patentable subject matter under 35 U.S.C. § 101.

On the other hand, claim 1 was saved, for the moment, at least, by the terms “access block” and “media block.”  The court thought that these terms plausibly “could [be] put forward [with] reasonable constructions for those terms that would render the claim patent eligible.” However, presumably because the case was still at the pleadings stage, “neither party has briefed or addressed in detail their proposed claim constructions for these terms, nor the legal or factual support for those constructions [and that] absent such argument the Court is not in a position [to dismiss claim 1].”

This decision suggests that well-reasoned arguments or lack of arguments for the construction of certain phrases may assist a patentee in countering an invalidity argument arising under 35 U.S.C. § 101.