Judge Robinson Grants Section 101 Motion to Dismiss for Unpatentable Subject Matter

June 8, 2016

Publication| Intellectual Property

In Device Enhancement LLC v. Amazon.com, Inc., C.A. No. 15-762-SLR (D. Del. May 17, 2016), Judge Robinson granted the defendant’s motion to dismiss the plaintiff’s claims of infringement of its computer programming patent under Fed. R. Civ. P. 12(b)(6) and 35 U.S.C. § 101. Judge Robinson summarized the current two-step Alice framework for determining patentability of computer programming inventions as follows: (1) the claims “must describe a problem and solution rooted in computer technology and the solution must be specific enough to preclude the risk of pre-emption”; and (2) “the claimed solution must be innovative enough to ‘override the routine and conventional’ use of the computer.”

The patent at issue disclosed “a method and system for allowing a user of a terminal device to remotely operate upgraded and/or advanced applications without the need for upgrading the client side application or computational resources.” The defendant argued that the patent merely described an “invention” for the division of labor among computers and pointed to the historical division of human labor. Judge Robinson agreed that the method described the abstract idea of division of labor and, while the concepts were “computer centric,” found that the patent’s disclosures were “at the macro-level” and did not delineate “any particular way of putting the ideas into practice.” Thus, the offered solution was not specific enough to pass muster under the first step in the Alice framework. On that basis, Judge Robinson granted the defendant’s motion to dismiss under Section 101.

Analysis: Although ultimately dismissing the action, Judge Robinson noted the evolution of Section 101 motions “from the complete rejection of patentability for computer programs, to the almost complete acceptance of such, to the still difficult-to-discern requirements of the Alice analysis” and cautioned that “the § 101 analysis should be, and is, a difficult exercise.”

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