In March 2016, a number of district courts have expressed hesitation to decide 35 U.S.C. § 101 patentability too soon. Although each court offered its own interpretation of how to proceed, the underlying message was clear: there is growing concern some courts have ruled on the validity of certain software and other computer-implemented technologies prematurely post-Alice.
On March 7, 2016, Judge Mary Cooper of the United States District Court for the District of New Jersey issued a ruling denying a defendant’s motion to dismiss without prejudice until claim construction could be completed. See Synchronoss Technologies, Inc. v. Hyperlync Technologies, Inc., Case No. 15-2845 (MLC) (D.N.J., Mar. 7, 2016, Order). The judge noted a fundamental dispute existed between the parties regarding the interpretation of certain claims related to the patents, which claimed synchronization and data backup technology. In particular, the plaintiff argued the patents disclosed improved synchronization systems, as well as explicit detail within the claims as to how the patents performed these technological improvements. Such disclosures would pass the Alice test, transforming the patented invention into “significantly more” than an abstract idea itself. Of course, the defendant disagreed with this analysis. Without clarity on how the key terms should be construed, the judge found it impossible to determine whether the claimed technology transformed abstract ideas into inventive concepts, and ruled claim construction should be completed first.
Just one day later, the United States District Court for the Southern District of California ruled the same.See Palomar Technologies, Inc. v. MRSI Systems, Case No. 15-cv-1484 JLS (KSC) (S.D. Cal., Mar. 8, 2016, Order). This time, the claimed invention involved a method of properly placing electronic components into circuits or other devices. Both parties disputed the fundamental character of the patent’s claimed subject matter. Was the patent-in-suit an ingenious method to solve a specific problem in the electronics assembly industry, or just another abstract idea implemented on a generic computer? Presiding Judge Sammartino held that, without a clearer idea of precisely what the patent claimed, a § 101 ruling on patentability would be improper at the pleadings stage. As such, claim construction was ordered, and the judge denied the motion to dismiss without prejudice. However, on the very same day, Magistrate Judge Love in the United States District Court for the Eastern District of Texas ruled an early, expedited claim construction would not resolve whether an invention was patent-ineligible, but instead ordered the parties to follow the ordinary course of litigation through claim construction before entertaining any dispositive motions as to the patent’s validity. See Realtime Data, LLC v. Actian Corporation, et al., Case No. 6:15-cv-463-RWS-JDL (E.D. Tex. Mar. 8, 2016, Order).
Adding to the mix was Judge Robinson of the District of Delaware, who ruled on March 22, 2016 in three separate decisions that the challenged patents were valid—and that claim construction was not necessary at all to make this determination. These three decisions noted the growing complexity of deciding § 101 motions post-Alice, as well as a concern for the harmonization of § 101 benchmarks when compared with other aspects of patent law. The judge looked to whether the claims in these cases were specific enough to preclude pre-emption, as well as whether the claims were innovative enough to move the invention beyond the computer’s generic, routine use. Judge Robinson ruled the three patents at hand—a method of improved image scanning, a method of performing translingual searches on the Internet, and a communication network with a priority queuing device to avoid network congestion—met these two benchmarks. See Improved Search LLC v. AOL, Inc., Civ. No. 15-262-SLR (D. Del. Mar. 22, 2016, Order); Intellectual Ventures I LLC v. Ricoh Americas Corp., et al., Civ. No. 13-474-SLR (D. Del. Mar. 22, 2016, Order); Network Congestion Solutions, LLC v. U.S. Cellular Corp., Civ. No. 14-903-SLR (D. Del. Mar. 22, 2016, Order).
These decisions each accomplished the cumbersome goal of determining patent eligible subject matter in their own way. What the decisions do have in common is the underlying message that invalidating a patent is not a process to be taken lightly. Determining patent ineligibility under § 101 should only occur after a thorough analysis of the underlying claims has first occurred. But, perhaps, according to Judge Robinson, conclusively finding a patent meets the Alice § 101 criteria might be possible at an early stage, without undergoing claim construction.