Although the subject matter eligibility of software patents has come under increased scrutiny since the Supreme Court issued its opinion last year in Alice Corp. v. CLS Bank, one Massachusetts court recently declined to invalidate a trio of patents directed to job applicant software. Plaintiff Kenexa had asserted infringement claims against three defendants, and two of the defendants—including HireAbility—subsequently moved for judgment on the pleadings that Kenexa’s patents recite unpatentable subject matter under § 101.
The patents generally relate to processes for extracting data from non-uniformly formatted resumes and fitting the data to preset fields in an online form, and enabling job applicants to verify and modify the data before it is submitted to the employer. Using the two-step test from Alice, Judge Saylor first analyzed whether the patented claims are directed to an abstract idea. He acknowledged that “the claims here are not easily reduced to one succinct statement of an ‘abstract idea’.” But, he also noted that the apparent function of the patents-in-suit—i.e., streamlining the job-application process—is one of “organizing human activity,” an area deemed abstract by the Supreme Court in Alice. Because Judge Saylor resolved the § 101 issue under step two of the test as described below, he concluded that “it is not necessary to resolve the first step definitively at this stage.”
Turning to step two of the Alice test, the Court then analyzed whether Kenexa’s claims contain an inventive concept. As support for its argument that the patents should be invalidated, the defendants submitted charts mapping Kenexa’s claims to what they deemed to be “routine business practices,” to show that the claims would pre-empt such practices. Although the Court stated that “[i]f defendants are correct (1) that the business practices detailed [in the charts] can fairly be characterized as ‘routine’…and (2) that the corresponding claims would pre-empt their future practice, then a judgment of invalidity would likely be warranted,” the Court cautioned that it could not simply assume the accuracy of such factual matters at the pleading stage.
The Court also found the claims “not manifestly invalid for lack of inventiveness,” noting that they also recite a method of digital extraction which Kenexa claimed is an advanced technique that conventional computers cannot perform. The Court stated that “[i]f plaintiff is correct, then the recitation of that technique could qualify as a ‘meaningful limitation’ that goes ‘beyond generally linking the use of the[method] to a particular technological environment’ and thus supplies an ‘inventive concept.’” Viewing this contention in the light most favorable to Kenexa, the Court deemed it sufficiently plausible to survive a motion for judgment on the pleadings.
Thus, the Court denied Defendants’ motion for judgment on the pleadings of invalidity of Kenexa’s patents, noting that Defendants had failed to put forth clear and convincing evidence of that the patents-in-suit are invalid under § 101. This decision highlights the heavy burden imposed on defendants that attempt to invalidate a patent on subject matter eligibility grounds at the pleadings stage. Defendants (and plaintiffs) should carefully consider the facts set forth in their respective pleadings to determine whether such facts would satisfy (or fall short of) the threshold needed to render a patent invalid under § 101.
The case is Kenexa BrassRing, Inc. v. HireAbility.com, LLC, et al., Civil Action No. 12-10943 (D.Mass.), before Judge F. Dennis Saylor IV. A copy of the order can be found here.