The Software IP Report

Four More Cases Holding Patent Claims Ineligible Under 35 U.S.C. § 101

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

Here are four cases decided in the course of a week in which U.S. district courts held patent claims ineligible under 35 U.S.C. § 101.

Synopsis, Inc. v. Mentor Graphics Corp., No. C 12-6467 MMC (N.D. Cal. Jan. 20, 2015). Granted defense motion for summary judgment of invalidity under 35 U.S.C. § 101 for claims of U.S. Patent Nos. 5,748,488, 5,530,841 and 5,680,318. The patents “describe a method for synthesizing a complex logic circuit from a ‘user description specifying only signals and the circumstances under which the signals are produced, i.e., without requiring the designer to specify the hardware components or connections,’” which can then ultimately be “used to determine the appropriate hardware and connections.” The court found that the patent claims are directed to a mental process, and that the stated claims “lack the inventive concept necessary to transform a patent-ineligible abstract idea into a patent-eligible invention.”

Certusview Techs. v. S&N Locating Servs., Civil. No. 2:13cv346 (E.D. Va. Jan. 21, 2015). Granted a defense motion under FRCP 12(c) for judgment on the pleadings under 35 U.S.C. § 101. Plaintiff alleged infringement of U.S. Patent Nos. 8,290,204, 8,407,001, 8,340,359, 8,265,344 and 8,532,341, directing to locating and using electronic records of underground facilities during excavation operations. Specifically, the patents purported to solve “some of the problems that locate technicians encountered in documenting locate operations” during excavation activities.

Open Text S.A. v. Box, Inc., Case No. 13-cv-04910-JD (N.D. Cal. Jan. 20, 2015). Granted a Rule 12(c) motion for judgment on the pleadings, of U.S. Patent Nos. 6,223,177, 6,917,962, 7,287,055, 7,299,258, and 7,320,018. The “patents’ alleged innovation is to facilitate workplace collaboration through the Internet or an intranet without specialized software or calling on a system administrator or IT person for help.” The court found the patents invalid under 35 U.S.C. § 101, stating that the “core concept is inherently abstract, and their implementation, which consists of standard technology like browsers, servers, and networks, has nothing inventive whatsoever about it.”

E. Coast Sheet Metal Fabricating Corp. v. Autodesk, Inc., Civil No. 12-cv-517-LM (D.N.H. Jan. 15, 2015). Granted motion for summary judgment of unpatentable subject matter under 35 U.S.C. § 101 for U.S. Patent Nos. 7,917,340, 7,449,839, and 8,335,667. The patents were directed to “effect an improvement in the technical field of CAD/CAM software.”  The patents provided “a specific way to obtain and enhance a model created and stored in one software application and then manipulate and further define that model to make a fabrication blueprint – thus eliminating the need to redraw components of an architectural drawing before coordination, fabrication, and installation of a system.” The court concluded “that the advantage of the claimed invention is increased speed resulting from the normal operation of a generic computer.” Speeding up the process is not an inventive concept.


Finally, a motion for a preliminary injunction was denied, but not before the court rejected the defendant’s argument that patent claims were directed to unpatentable subject matter.

Wavetronixllc v. Iteris, Inc., Case No. A-14-CA-970-SS (W.D. Tex. Jan. 21, 2015). Denied plaintiff’s motion for preliminary injunction for alleged infringement of U.S. Patent No. 7,991,542. The patent pertains to a system that communicates with the traffic light controller and “tracks the speed and location of vehicles approaching an intersection in real time (dynamically),” and determines if the vehicle can safely stop within the “dilemma zone.” This zone is where the “driver is approaching an intersection and the traffic light turns yellow at a moment when the driver is too close to the intersection to comfortably stop the car, yet too far from the intersection to comfortably pass through before the traffic light turns red.” The defendant’s product accomplishes the same result via a different way of determining the vehicle’s estimated time-of-arrival at a traffic control point. The defendant challenged the validity of the patent on two grounds: first, the patent “is invalid in light of prior art,” and second, the patent “is directed at an abstract idea.” Both arguments failed, and the court found that the existing patent “significantly improved upon existing technological processes for providing dilemma zone protection.” The court found that the plaintiff did not demonstrate irreparable harm at the present time to issue the injunction and denied the plaintiff’s motion without prejudice.

 Thanks to law clerk Robert Billings for his assistance in preparing this post.