Magistrate Judge Burke Grants in Part Defendant’s Section 101 Motion to Dismiss after Claim Construction Hearing

June 8, 2016

Publication| Intellectual Property

In Yodlee, Inc. v. Plaid Technologies Inc., C.A. No. 14-1445-LPS (D. Del. May 23, 2016), Magistrate Judge Burke issued a report and recommendation granting in part the defendant’s motion to dismiss under 35 U.S.C. § 101. Although the defendant’s motion was filed prior to the Court’s claim construction order, Judge Burke noted that “[w]hen a Rule 12 motion is filed on Section 101 grounds, one possible path for a court is to wait to resolve the motion until after claim construction has been decided.” Judge Burke found that this was the appropriate course of action in this case, where the defendant argued that 162 claims over seven patents were invalid. Judge Burke determined that waiting until the claim construction ruling had been issued was appropriate because the ruling would “narrow[] the scope of possible outstanding legal issues that might be relevant to [the defendant’s] 101 affirmative defenses.” Judge Burke also noted that waiting to decide the motion to dismiss until the plaintiff had decided which claims it would assert in the case “dramatically cut down on the need for the Court to assess the eligibility of large swaths of dependent claims that ended up not being asserted in the litigation.” Judge Burke recommended that the plaintiff’s infringement claims for three of the patents-in-suit be dismissed, finding that these patents were directed to the abstract ideas of “transforming data from one form to another” and “identifying sub-tasks within a larger task, managing completion of those sub-tasks, and communicating the results to the client.”

Analysis: While the trend for filing Alice motions early in cases continues to be attractive, there are circumstances under which the Court will wait until claim construction to rule on the issue.

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