Judge Andrews Grants Motion for Judgment on the Pleadings Under Section 101
September 1, 2016
Publication| Intellectual Property
In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, et al., C.A. Nos. 14-006 and 14-1212 (D. Del. Aug. 15, 2016), Judge Andrews granted in part the defendants’ motion for judgment on the pleadings pursuant to 35 U.S.C. § 101, finding four of the five patents-in-suit ineligible and dismissing as moot the fifth patent due to a stipulation of dismissal by the parties as to that patent. The Court rejected the plaintiff’s argument that claim construction must occur prior to deciding a motion on Section 101 grounds, and held that resolution of a Section 101 motion at the pleading stage is appropriate if claim construction is unnecessary or if “no reasonable construction” would bring the claims within patent eligible subject matter. For purposes of the motion, Judge Andrews adopted the plaintiff’s proposed constructions. He also rejected the plaintiff’s use of prior art to show how the patents add “significant inventive concepts over the prior art,” noting that “the novelty and non-obviousness of the claims . . . does not bear on whether the claims are directed to patent-eligible subject matter under § 101.”
As to two of the patents-in-suit, Judge Andrews found that they were directed to the abstract idea of a “method of sending and monitoring the delivery of audio/visual information.” He rejected the plaintiff’s argument that the patents were directed to solving technological problems of “load, bottlenecking, and inadequate records,” finding that even if the patents were so directed, they failed to specify the mechanism that would solve the identified problem. As to the third patent, Judge Andrews found that the patent was directed to the abstract idea of “monitoring the delivery of real-time information to a user or users,” and rejected the plaintiff’s argument that limiting the claims to a specific way to stream real-time information transformed the claims to patentable subject matter. Rather, the Court found that the patent claims added nothing inventive to the concept of delivering information to a user. Finally, Judge Andrews found the fourth patent-in-suit invalid because it added generic components and conventional steps to the abstract idea of “monitoring the delivery of information.”
Key Points: The decision serves as an example of the continuing trend to address Section 101 motions under Rule 12(b)(6) and 12(c) and, at times, the Court’s willingness to adopt the non-moving party’s claim construction in order to do so.