Judge Andrews Invalidates Patent Under Section 101

April 3, 2018

Publication| Intellectual Property

In D&M Holdings Inc. v. Sonos, Inc., No. 16-141-RGA (D. Del. Feb. 20, 2018), Judge Andrews granted summary judgment that one of the patents asserted by the plaintiffs was invalid under 35 U.S.C. § 101 as directed to ineligible subject matter. The patent at issue claimed a method of recalling previous audio preferences when playing a recording.

Under the first Alice step, Judge Andrews found that claim 1 (which Judge Andrews treated as representative, over the plaintiffs’ objection) was directed to an abstract idea. The Court characterized the abstract idea as “choosing to play back media with or without playback preferences,” finding that this amounted to the automation of a process that could be performed manually and not an improvement on an existing process. Judge Andrews rejected the plaintiffs’ reliance on portions of the specification in their argument, finding that technologies disclosed in the specification (such as a computer and a graphical user interface) were not found in the claim limitations.

Under the second Alice step, Judge Andrews found that the claims did not amount to an inventive concept that did significantly more than describe the abstract idea itself. The plaintiffs argued that a user interface and “sophisticated” computer programming constituted inventive concepts, but Judge Andrews found that the claim language did not recite or require the use of either technology. Any technology found in claim 1, according to the Court, was at most generic or conventional.

Key Point: Judge Andrews did not find the recent Federal Circuit decision in Berkheimer v. HP Inc., No. 2017-1437 (Fed. Cir. Feb. 8, 2018)—which held that whether a claim element or combination of elements is well understood, routine, and conventional is a question of fact—to be an obstacle to invalidating the patent here, since the Court found that the allegedly inventive concepts were not present in the claim language.

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