The Software IP Report

35 U.S.C. § 101 Alice Train Rolls on in the District Courts

By Charles Bieneman

Categories: Patent Eligibility, Software Patents, The Software IP Report

Here are brief summaries of nine recent cases in which district courts have considered validity of patent claims under 35 U.S.C. 101.  The trend is not good for patent owners.

Two Patents Survive a Rule 12 Alice Challenge . . .

Mirror Worlds Technologies LLC v. Apple Inc., No. 6:13-CV-419 (E.D. Texas July 7, 2015).  Judge Schroeder in the Eastern District of Texas denied without prejudice a motion for judgment on the pleadings (albeit after claim construction).  Claims of U.S. Patent No. 6,006,227 were directed to more than the abstract idea of organizing documents.  In particular, the court stated that the claims required “the computer to maintain data units in a persistent mainstream of all data units received or generated and at least one persistent substream.”  Even if pre-computer analogs were well-known and conventional, these recitations of computer activity were not.

Execware LLC v. BJ’s Wholesale Club Inc., No. 1-14-cv-00233 (D. Del. July 15, 2015).  Magistrate recommended denying motion for Rule 12; defendants did not show patent-ineligible subject matter in claims of U.S. Patent No. 6,216,139, directed to a system “to rapidly format and re-format databases or ‘text data objects,’ according to the preferences of the user.”

A Lot of Patents Fail the Alice Test . . .

Motions at the Pleadings Stage (FRCP 12)

FairWarning IP, LLC v. Iatric Systems, Inc., No. 8:14-cv-2685-T-23MAP (M.D. Fla. June 24, 2015).  Motion to dismiss granted.  U.S. Patent No. 8,578,500 was “directed to” the unpatentable abstract idea of “analyzing records of human activity to detect suspicious behavior.”

Affinity Labs of Texas LLC v. DirecTV, No. 6:15-cv-00030 (W.D. Texas July 7, 2015).  Motion to dismiss granted, and magistrate upheld, where claims of U.S. Patent No. 7,970,379 were directed to the abstract idea of disseminating regionally broadcast content outside of the region.  Considering Alice patent-eligibility before claim construction was appropriate where the plaintiff did not identify any issue requiring claim construction.

Appistry Inc. v. Inc., No. C15-311 (W.D. Wash. July 9, 2015).  Granted motion for judgment on the pleadings where claims of U.S. Patent No. 8,200,746 and U.S. Patent No. 8,341,209 “recite the abstract idea of distributed processing akin to the military’s command and control system, a longstanding and intuitive practice used by many large hierarchical organizations that value speed, efficiency, reliability, and accountability.”  Claims simply used inexpensive networked computers to achieve “a network of multiple actors to efficiently and reliably process information and/or complete a task by breaking down the job into small pieces, each handled by a different actor organized within an internal hierarchy.”

Landmark Technology, LLC v. Assurant, Inc., No. 6-15-cv-00076 (E.D. Texas July 14, 2015).  Patents are falling even in the Eastern District of Texas.  Here, Magistrate Love recommended a Rule 12(b)(6) dismissal after finding patent-ineligibility of claims of U.S. Patent No. 5,576,951 directed to “a computer search system for retrieving information.” Even a seemingly narrower claim that appeared to recite a physical structure was held patent-ineligible as simply reciting known computer concepts rather than an additional inventive concept.  Incredibly, U.S. Patent No. 5,576,951 had survived not one, but two, ex parte reexaminations, demonstrating that defining subject matter that is patentable over the prior art is not enough to define patent-eligible subject matter under 35 U.S.C. § 101.  This assumes, of course, that District Judge Schroeder will affirm the magistrate.

Summary Judgment

Kickstarter, Inc. v. Fan Funded, LLC, No. 11 Civ. 6909 (S.D.N.Y. June 29, 2015).  The title of the patent held invalid under 35 U.S.C. § 101 says it all: “Method and apparatuses for financing and marketing a creative work.”  The court stated that U.S. Patent No. 7,885,887 “claims only the abstract and time-honored concept of patronage, and even the addition of an element of computer use is insufficient to render it valid under Section 101 of the Patent Act, 35 U.S.C. § 101.”

Tranxition, Inc. v. Lenovo (United States), Inc., No. 3-12-cv-01065 (D. Ore. July 9, 2015).  U.S. Patent Nos. 6,728,877 and 7,346,766 were directed to “a method and system for automatic transitioning of configuration settings among computer systems.”  Nothing limited the claims to anything “narrower than a claim to the abstract idea of migrating settings between computers.”  Therefore, the claims failed to recite patentable subject matter under 35 U.S.C. § 101.

Netflix, Inc. v. Rovi Corp., No. 4-11-cv-06591 (N.D. Cal. July 15, 2015).  Patents directed to “storing a user’s viewing history and making recommendations based on that history,” using “categories to organize programs,” and bookmarking were held patent-ineligible.  There were a total of five patents-in-suit: U.S. Patent No. 6,898,762; U.S. Patent No. 7,065,709; U.S. Patent No. 7,103,906; U.S. Patent No. 7,945,929; and U.S. Patent No. 7,974,962.