Magistrate Judge Thynge Grants Google’s Motion for Summary Judgement of Invalidity Under 35 U.S.C. 101

January 5, 2016

Publication| Intellectual Property

In Collarity, Inc. v. Google Inc., C.A. No. 11-1103-MPT (D. Del. Nov. 25, 2015), Magistrate Judge Thynge granted Google Inc.’s motion for summary judgment of invalidity of the asserted claims under 35 U.S.C. § 101, concluding that plaintiff’s asserted claims were directed to a patent-ineligible abstract idea and lacked an inventive concept. Despite plaintiff’s argument that its search refinement patent is directed to the not-abstract idea of “improving computerized searches,” the Court agreed with defendant that the asserted claims are directed to refining search queries by switching out particular terms and retaining others: an abstract idea known outside the computer context as a practice that has already been used by humans?specifically, by research librarians?for decades.

The Court also disagreed with plaintiff’s argument that even if determined to be abstract, the asserted claims of its patent contain an “inventive concept” by addressing “a problem unique to Internet searching,” since users do not have the opportunity to describe what they are actually searching for. Specifically, the Court concluded that the claims were not in fact rooted in computer technology, as they lack computer requirements and do not offer a “uniquely Internet-related solution” to the problem.

The Court additionally rejected plaintiff’s final argument that its patent was valid in light of the recent issuance of a continuation patent similar to the patent-in-suit. The Court noted that even if plaintiff provided the Patent Office with Google Inc.’s prior art, invalidity contentions, and expert reports during the prosecution of the continuation patent as claimed, defendant had not yet raised its Section 101 contentions. The Court was not persuaded by plaintiff’s argument that a Corrected Notice of Allowance issued after the Supreme Court’s decision in Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014), confirms the validity of a similar patent, because such an argument incorrectly suggests that “any patent issued post-Alice would be inoculated from invalidity.”

Analysis: This is Magistrate Judge Thynge’s second recent decision on a motion to dismiss under Section 101; the first being a report and recommendation issued on September 23, 2015.

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