Chief Judge Stark Denies 101 Motions in Two of Three Decisions Issued in One Day

November 3, 2016

Publication| Intellectual Property

On the same day, Chief Judge Stark issued opinions denying two out of three motions for judgment on the pleadings on the basis of unpatentability under 35 U.S.C. § 101.

First, Judge Stark denied the defendants’ motion for judgment on the pleadings in Vehicle IP, LLC v. AT&T Mobility LLC, C.A. No. 09-1007-LPS (D. Del. Sept. 29, 2016). The defendants argued that the claims were directed to the abstract idea of calculating a vehicle’s estimated time of arrival to a particular location. Judge Stark disagreed, concluding that although the claims involved making a calculation, “the details of the system or method steps dominate the claims.” The Court pointed to the identification of specialized pieces of equipment and the assignment of particular functions to each as evidence that the claims do more than merely “recite a formula for estimated time of arrival and add the words ‘apply it.’”

Judge Stark commented that because of the early stage of the case, the record did not allow a determination of whether hardware limitations in the claims were limited to generic computer capabilities.

Judge Stark also denied the defendant’s motion for judgment on the pleadings in MAZ Encryption Technologies LLC v. Blackberry Corp., C.A. No. 13-304-LPS (D. Del. Sept. 29, 2016). There, the claims at issue were directed to automatically encrypting files and storing them in an electronic data management system once a user has closed the files. Although the defendant, Blackberry Corporation (“Blackberry”), argued that the invention mirrors the system that hotels use to store and track room keys, in holding that the claims were not directed to an abstract idea, Judge Stark identified the “key inventive concept” as encrypting files without any input from the user. As such, the Court denied Blackberry’s motion.

The Court noted that had the motion been brought as a motion for summary judgment, the argument that a claim covered conventional elements combined in the same manner as in the prior art could have been supported with extrinsic evidence to rebut the characterization of the invention in the specification “as a technical solution to a problem in the prior art.” But on a motion for judgment on the pleadings, Judge Stark was obligated to accept this characterization as true.

In Data Engine Technologies LLC v. Google Inc., C.A. No. 14-1115-LPS (D. Del. Sept. 29, 2016), Judge Stark granted Google Inc.’s motion for judgment on the pleadings. The claims of three patents at issue were directed towards creating electronic, three-dimensional spreadsheets where individual pages can be labeled and selected, allowing spreadsheets to be stored in a single disk file or within a single file. Judge Stark concluded that such a method does not qualify as an inventive concept because humans have long performed the tasks of indexing, organizing, and displaying information without the use of a computer. Judge Stark explained that the invention was directed to the abstract idea of labeling and organizing spreadsheets through “notebook-type tabs,” and the additional limitations reflected “generic computer limitations” similar to those the Supreme Court has held not to constitute inventive concepts.

Judge Stark held that the challenged claims of the fourth patent at issue were directed to the abstract idea of collecting spreadsheet data, recognizing changes to the spreadsheet data, and storing information about the changes, and lacked an inventive concept conferring patent eligibility. Thus, the Court granted Google’s motion for judgment on the pleadings.

Key Points:  Moving for judgment on the pleadings under Section 101 is attractive because of the potential for early resolution, but Judge Stark cautions that the unavailability of extrinsic evidence on a 12(c) motion and the early posture of a case may prove detrimental to arguments regarding patent-eligible subject matter.

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