The Software IP Report

Alice Roundup, Late Summer 2015 – Part 2: Patent-Eligibility under 35 U.S.C. § 101

Although district courts considering patent-eligibility under 35 U.S.C. § 101 and Alice Corporation Pty. Ltd. v. CLS Bank International more often than not find patent claims invalid, some patent claims survive, as evidenced by the cases discussed below.  My last post discussed cases finding patent claims invalid under the two-part Alice “abstract idea” test.  This post discusses cases where claims were held patent-eligible, or where the patent-eligibility determination was deferred until claim construction could be performed.

Claims Held Patent-Eligible on Summary Judgment

ContentGuard Holdings, Inc. v. Inc., Case No. 2:13-CV-1112-JRG (E.D. Texas Aug. 6, 2015).  Motion for judgment on the pleadings converted to summary judgment motion and denied because “the Patents-in-Suit are not directed toward an abstract idea, at least because they are directed toward patent-eligible methods and systems of managing digital rights using specific and non-generic ‘trusted’ devices and systems.”

DataTern, Inc. v. MicroStrategy, Inc., Nos. 11-11970-FDS and 11-12220-FDS (D. Mass. (Sept. 4, 2015).  Denied motion for summary judgment of Section 101 patent invalidity.  Representative claim recited “[a] method for interfacing an object oriented software application with a relational database.”  The court found that “to the extent that the ‘502 patent could be described as encompassing the abstract concept of ‘mapping out relationships between two databases,’ the claims of the patent would appear to be sufficiently limited in scope as to supply an ‘inventive concept.’”  Citing DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014), the court reasoned that “the ‘502 patent is directed at solving a problem that specifically arises in the realm of computing; indeed, object-oriented programs exist only in the realm of computers, and relational databases are utilized primarily, if not exclusively, on computers.”

Prism Technologies v. T-Mobile USA, Inc., No. 8:12CV124 (D. Neb. Sept. 22, 2015).  Granted summary judgment of patent-eligibility under 35 U.S.C. § 101.  Patents-in-suit were directed to “managing access to protected computer resources provided via an internet protocol network.”  The court agreed that the claims were directed to the abstract idea of “providing restricted access to resources.”  However, the claims included an inventive concept because they do more than simply use the Internet, but “modify the way the Internet functions to provide secure access over a protected computer resource.”

Denial of Motion for Patent-Ineligibility at the Pleadings Stage

Canrig Drilling Tech. v. Trinidad Drilling L.P., No. H-15-0656 (S.D. Texas Sept. 17, 2015).  Motion for judgment on the pleadings of invalidity under 35 U.S.C. § 101 denied.  Patent claims were directed to controlling direction drilling of an oil rig “drill string.”  The patent claims were not “an attempt to patent the abstract concept of rotation.”  Instead, the claims “address specific challenges in directional drilling through a concrete process for controlling the rotation of the long drill strings to and between predetermined angles,” and “are directed to a physical apparatus and drilling process of controlled rotation by a specific amount (the predetermined angle).”

Mobile Telecommunications Technologies, LLC v. Leap Wireless International, Inc., No. 2:13-cv-885-RSP (E.D. Texas Sept. 23, 2015).  Magistrate judge denied motion for judgment on the pleadings of Section 101 invalidity.  Patent claims reciting a “method of operating a plurality of paging carriers in a single mask-defined, bandlimited channel” were not directed to an abstract idea.  The court reasoned that transmission of “’paging carriers’ from ‘the same location’ and modulating their transmission frequencies is not an abstract idea in the vein of ‘a fundamental economic practice.'”  Even if the claim was directed to an abstract idea, additional elements would have provided a patent-eligible inventive concept.

Phoenix Licensing, LLC et al v. CenturyLink, Inc., No. 2:14-CV-965-JRG-RSP (E.D. Texas Aug. 14, 2015).  Magistrate judge recommended denying motion to dismiss on grounds that Section 101 validity could not be determined prior to claim construction.  The defendants argued that asserted patent claims were “directed to the abstract idea of personalized marketing correspondence.”  However, “no fewer than six disputed claim terms appear in one or more of the three claims Defendants purport to be representative of all Asserted Patents.”