Recent cases in which patent claims survived challenges under 35 U.S.C. § 101 provide lessons, albeit perhaps narrow ones, to both patent owners and defendants navigating the law of patent-eligibility after Alice Corp. v. CLS Bank. These lessons are perhaps not news: venue and procedural posture both matter, and unpredictability still reigns.
Perhaps least surprising of the three cases discussed in this post is Intellectual Ventures I LLC v. Canon Inc., 1-13-cv-00473 (D. Del. November 9, 2015). There, considering a spate of summary judgment motions, Judge Robinson declined to hold that claims of U.S. Patent No. 6,130,761 patent-ineligible. The defendant had argued that “the '761 patent is drawn to the idea of extracting digital data at a purportedly improved scan rate by implementing a mathematical relationship on a conventional scanner.” The court disagreed that the claims were directed to an abstract idea because they recited “steps including determining the parameters (which meet a certain mathematical formula) and applying parameters to operate a scanner,” but “such claims do not claim the mathematical formula nor do they seek to simply ‘implement’ such a formula.” Further, the claims were not pre-empting because there were many other possible relationships among claimed elements besides those in the formula.
Proving that sometimes reputations are deserved, in Advanced Marketing Systems, LLC v. CVS Pharmacy, Inc., No. 6-15-cv-00134 (E.D. Tex., November 19, 2015), a magistrate judge in the Eastern District of Texas denied (without prejudice) a motion for judgment on the pleadings brought under FRCP 12(c). U.S. Patent Nos. 8,219,445, 8,370,199, and 8,538,805 included similar claims directed to, for example, a “discount vehicle for use with a data processing system for tracking and processing a plurality of in-store discounts to potential purchasers of plural products during the checkout process.” Although recognizing “that, under certain circumstances, a determination of patent eligibility under § 101 may be made at the pleading stage,” the court thought that the patent-eligibility question in this case was best deferred until after claim construction. The defendants hurt themselves by arguing that some claims were invalid under the printed matter doctrine, leading the court to say that claim construction was required to determine whether the claims did in fact encompass printed matter. Further, the court said that claims recited “physical structures,” although other courts might have called these physical structures generic computer equipment.
Another recent case included a denial of a post-trial motion to find claims of U.S. Patent No. 6,154,844 patent-ineligible. Finjan, Inc. v. Blue Coat Systems, Inc., No. 5-13-cv-03999 (N.D. Cal. November 20, 2015). The ’844 patent, one of five patents-in-suit that a jury found were infringed, recited, in representative claim 1.
1. A method comprising:
receiving by an inspector a Downloadable;
generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and
linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.
The defendant argued that the claim was “directed to the abstract idea of ‘receiving’ a downloadable, ‘generating’ information, and then ‘linking’ the downloadable and generated information.” However, the court was persuaded by the USPTO’s “2014 Interim Guidance on Patent Subject Matter Eligibility,” which included a “hypothetical claim [that] covers ‘receiving an electronic communication,’ ‘storing the communication,’ and ‘extracting…malicious code from the electronic communication to create a sanitized electronic communication.’” This claim, like the USPTO’s example, was “necessarily rooted in computer technology.” And the claims here were not so broad as to be preemptive: “there are many possible ways and unclaimed alternatives to malware protection.”