Motions to dismiss used to be rare in patent litigation. Since the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, motions to dismiss lawsuits based on patents that arguably cover “abstract ideas” are commonplace. The first such motion in the District of Minnesota was a huge success, resulting in an opinion that recommends dismissal and finds the patents invalid.
The lawsuit is about injection molded parts. Patent owner Proto Labs claims it pioneered advances in computer automation in the industry and acquired several patents. In general, the patents describe a method where a customer sends a CAD file of the desired part, a computer assesses the CAD file and identifies parameters of the mold that impact cost and manufacturability, the customer selects the desired parameters on a quotation form, and the computer generates a quote for the part.
Proto Labs asserted four patents against its competitor, ICO Products. ICO Products moved to dismiss out of the gate. ICO Products argued that the alleged “inventions” described in the patents are not eligible for patent protection because they are abstract ideas.
Abstract Ideas Cannot Be Patented
Courts apply a two-step test to evaluate whether a patent is eligible for protection under Section 101 of the Patent Act. The first step considers whether the patent is directed to a patent-ineligible concept, such as a law of nature, natural phenomenon or abstract idea. ICO Products argued that Proto Labs’ patents improperly claim the abstract idea of determining and providing a quote to a customer for a mold or molded part. Proto Labs argued that the patents recite the use of real, concrete objects, such as a “molded parts,” which “can be touched and felt” and are therefore not abstract. The Court rejected Proto Labs’ argument and readily concluded that the patents are directed to abstract ideas. The Court wrote: “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”
The second step when evaluating whether a patent is subject-matter eligible asks whether the patent has “additional features” that ensure the claim is more than a drafting effort designed to monopolize the abstract idea. The “additional features” must be meaningful limitations that recite more than “well-understood, routine, conventional activity.” ICO Products argued that the Proto Labs patents lack the additional features required to render them subject-matter eligible because they “simply recite an abstraction implemented using generic, unspecified computer technology.” The Court agreed, and indicated that “the receipt, modification or transmission of a CAD file or software does not provide any meaningful limitations on the scope of the claims.”
The Court acknowledged that Proto Labs “may have been instrumental in the evolution of providing mold-making quotations through the world of computers.” The “fatal flaw” in the patents for the Court was that they “simply reference the application of a computer” in a process that was not new.
Click here for the decision.