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Patent Claims for “Two-step Pick and Place” fail § 101 at Rule 12 stage.

Patent claims directed to a two-step “pick and place” operation for attaching electronic parts to a circuit body (a “die attach” method) were held ineligible on a Rule 12(c) motion for judgment on the pleadings under 35 U.S.C. §101 and the Alice/Mayo test. Palomar Technologies, Inc., v MRSI Systems, LLC, Case no. 18-10236-FDS (D. Mass., May 28, 2020.) Background The plaintiff Palomar sued defendant MRSI for infringement of Palomar’s U.S. Patent No. 6,776,327. MRSI petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of the patent. The PTAB upheld validity of claims 1-47 and held claim 48 invalid. Following the IPR, MRSI moved for summary judgement on the basis of patent-ineligibility under 35 U.S.C. §101. The ’327 patent discloses a method which utilizes “double pick and place” wherein a first workpiece is first moved to an intermediate location close to a target attach location on a…

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Automated Delivery Notification is Ineligible Subject Matter

The Southern District of Florida recently granted a motion to dismiss in favor of Minted LLC, and a motion for judgment on the pleadings in favor of ShoppersChoice.com LLC based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test. At issue wasclaim 11 of U.S. Patent No. 9,373,261, directed to a system for automating notification of delivery or pickup of a good or service. Electronic Communication Technologies, LLC v. Minted, LLC, No. 16-81669-CIV (S.D. Fla. Jan. 18, 2019); Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC, No. 16-81677-CIV (S.D. Fla. Jan. 18, 2019). Claim 11 of the ‘261 patent was ineligible because the claim was directed toward the abstract idea of “providing advance notification of the pickup or delivery of a mobile thing,” and the claim recites “purely generic and conventional computer equipment” that operates in a “routine and conventional” manner. Claim 11 is reproduced here: 11. An automated…

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Does Presumption of Patent Validity Extend to Eligibility?

A plaintiff seeking to enforce patents claiming automated methods for uploading multimedia content was ordered to pay defendants’ attorney fees based on a finding of an “exceptional case” under U.S.C. § 285.  Cellspin Soft, Inc. v. Fitbit, Inc., No. 4:17-CV-5928-YGR (N.D. Cal. July 6, 2018).  The court had previously granted motions to dismiss because claims of U.S. Patent Nos. 8,738,794; 8,892,752; 9,749,847; and 9,258,698 were not patent eligible under 35 U.S.C. § 101 and the Alice/Mayo test.  Relying on Inventor Holdings, LLC v. Bed Bath & Beyond Inc. (Fed. Cir. 2017), the court found the case exceptional because the claims were not only “manifestly directed to an abstract idea,” but, unlike the Inventors Holdings litigation, were sought to be enforced after a lot of post-Alice precedent should have made clear that the claims were patent-ineligible. The plaintiff’s main basis for opposing the fee award was “a lack-of-bad-faith defense.”  One of…

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