Magistrate Judge Burke Recommends Denial Without Prejudice of Section 101 Motion

March 29, 2019

Publication| Intellectual Property

In TrustID, Inc. v. Next Caller, Inc., No. 18-172-LPS (D. Del. Feb. 25, 2019), Magistrate Judge Burke recommended that the Court deny the defendant’s motion to dismiss the patent infringement claims of the complaint for claiming ineligible subject matter.

For the purposes of Alice Step 1, the Court assumed that the patents were directed to “collecting and analyzing telephonic information,” the abstract idea alleged by the defendant. At Alice Step 2, however, Judge Burke concluded that factual issues should prevent a finding at this time that the patents claimed ineligible subject matter. Judge Burke stated that it was “not hard to envision” the claimed methods being performed by humans without the use of computers, that the patents claimed they could be implemented on any software or hardware, and that, read broadly, the patents could pre-empt a “significant portion” of the field. But Judge Burke believed that disputed issues of fact warranted denial, since the patents suggested the use of conventional elements in unconventional ways to solve a problem particular to the field of computers and telephony: detecting fraud and misuse of telephone numbers and caller ID information. The Court was thus “uncomfortable” recommending dismissal and suggested that a summary judgment record may be a better vehicle to determine subject-matter eligibility.

Key Point: The influence of Berkheimer continues to be felt where patentees can persuade the Court that a factual dispute exists regarding conventionality.

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