Magistrate Judge Burke Recommends Denial of Motion to Dismiss for Invalidity Under Section 101

December 19, 2017

Publication| Intellectual Property

In Triplay, Inc. v. WhatsApp Inc., No. 13-1703-LPS-CJB (D. Del. Nov. 20, 2017), Magistrate Judge Burke recommended that the Court deny the defendant’s motion to dismiss two of the asserted electronic, cross-platform messaging patents as invalid under Section 101. The parties had agreed on representative claims from the two patents for the Section 101 analysis, and the plaintiff identified three elements located throughout the representative claims that it believed rendered the subject matter patent-eligible.

The Court had earlier reserved decision on whether one of the challenged claims included an inventive concept, pending Markman proceedings. Having construed the claims, Judge Burke stated that the first of the three elements identified by the plaintiff, as construed in that claim, included functional, conventional components, and the specification did not indicate that these components were combined in an unconventional way. Evaluated in the light most favorable to the non-movant, however, Judge Burke was unable to recommend that the motion be granted as to this claim, since he was not persuaded that any computer implementing the abstract idea would include this element. Furthermore, facially similar prior art recited in the specification did not stop the examiner from allowing the claim, according to the Court, suggesting that there were fact issues that would prevent invalidation on a 12(b)(6) motion.

Although all representative claims included this first element, Judge Burke analyzed the next two elements at issue in the remaining representative claims. As to both elements, Judge Burke found it difficult to determine whether the claims in which they were present were “directed to” the alleged abstract idea, and thus moved to the second Alice step to consider whether they were improvements to computer technology. But at the second step, the Court was unable to determine, on a motion to dismiss, whether these elements were merely conventional or an improvement over the prior art. Judge Burke stated that the specification suggested that the elements were novel solutions to problems in the art, and found it relevant (but not dispositive) that the prior art asserted in related inter partes reviews did not contain these elements. The Court recognized that novelty and patentability were different inquiries, but believed that the state of the prior art could inform difficult questions regarding conventionality and pre-emption.

Key Point: In ruling on patent-eligibility questions on a motion to dismiss, Magistrate Judge Burke noted that the clear and convincing standard applies only to factual disputes, not to legal disputes, and thus does not apply at the pleading stage, where factual disputes should not be resolved.

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