The Software IP Report

Unsupportable Claim Construction Warrants 12(b)(6) Dismissal

By Charles Bieneman

Categories: Patent Civil Procedure, The Software IP Report

Where the plaintiff could only rely on a construction of a patent claim term that was implausible, a magistrate judge recommended dismissal of the plaintiff’s complaint under FRCP 12(b)(6).  Bartonfalls, LLC v. Turner Broadcasting Systems, Inc., Case No. 2:16-cv-1127-JRG-RSP (E.D. Texas, March 15, 2017).  Claims of U.S. Patent Nos. 7,917,922 and 8,769,561 recited a “TV channel,” which the plaintiff contended encompassed an Internet uniform resource locator (URL).  C’mon! Really? said the court.

A complaint must state a plausible claim for relief.  Under Bell Atl. Corp. v. Twombly, 550 U.S. 554 (2007), this means that the plaintiff has alleged “‘enough fact[s] to raise a reasonable expectation that discovery will reveal’ that the defendant is liable for the alleged misconduct.”  The plaintiff tried to argue that nothing in the patent specifications or knowledge in the art “forbids URLs from being considered a channel.”  Maybe so, said the court, but the plaintiff had pointed to “nothing in the intrinsic evidence that permits a URL to be considered a TV channel.” (Emphasis in original.)  There was “no plausible basis for alleging that the plain and ordinary meaning of ‘TV Channel’ (or ‘TV Channel’ properly construed) covers URLs, i.e., a unique address for a web page that makes content addressable on the Internet.”

As an entertaining postscript, the court also dismissed the complaint with respect to U.S. Patent 9,094,694. The patent expired a month before it issued.  The plaintiff argued that a patent could not expire before it issued, else what could issue?  The court’s answer was pretty simple – the statutory term of the patent was clear, and what had issued was an expired patent.