Digest of OIP Tech., Inc. v. Amazon.com, Inc., No. 2012-1696 (Fed. Cir. June 11, 2015) (precedential). On appeal from N.D. Cal. Before Taranto, Mayer, and Hughes.
Procedural Posture: Plaintiff-Appellant appeals grant of a motion to dismiss its patent-infringement case under section 101 for failure to claim patentable subject matter. The Federal Circuit affirmed.
- Appellate Review: Patent eligibility under 35 U.S.C. § 101 is an issue of law reviewed de novo.
- Patent Eligibility (Section 101): The Federal Circuit held that claims concerning computer-implemented price optimization methods were, at best, an automation of the fundamental economic concept of offer-based price optimization, and no more than an abstract idea coupled with well-understood, routine data-gathering steps and conventional computer activity which are not patentable subject matter. The patent was found to lack an inventive concept sufficient to transform the claimed subject matter into a patent-eligible application of that idea.
- Judge MAYER, concurring: Addressing patent eligibility under § 101 at the outset as a “threshold” issue conserves judicial resources, spares litigation costs, and “works to stem the tide of vexatious suits brought by the owners of vague and overbroad business method patents.” He commended the district court’s adherence to the Supreme Court’s view of patent eligibility as a threshold issue “by resolving it at the first opportunity.”
Note: Special thanks to Na Kyung Lee, a 2015 Kenyon summer law clerk.