M2M Solutions, LLC, v. Amazon.com, Inc., No. 17-202-LPS-CJB (D.Del. Dec. 11, 2017)

In the most recent section 101 opinion out of Delaware, Magistrate Judge Burke addressed patent eligibility of three patents directed to systems, apparatuses, and methods of using wireless machine to machine (“M2M”) technology.  M2M is just as it sounds—it is a way for one machine to talk to another.  M2M allows, for example, a smartphone to receive an alert when a tool on the factory floor needs servicing, or start an oxygen service when a patient’s oxygen levels drop below a certain level.

In his opinion, Judge Burke spent time explaining his procedural approach to section 101 motions to dismiss.  In summary, the defendant must show that the allegations in the complaint (construed in a light most favorable to the plaintiff) establish the affirmative defense.  Section 101 is a question of law informed by subsidiary factual issues; Judge Burke applies the clear and convincing standard to resolving fact (but not law) disputes although he observes that the law on that point is not settled.  When there are multiple patents, Judge Burke is willing to address eligibility through analysis of a single representative claim after first considering (1) if all non-representative claims are adequately represented (that is, do all challenged claims relate to the same abstract idea, and do any of the non-representative claims add inventive concepts); (2) are there claim construction issues that must be decided; (3) are there any set of facts that could be proven relating to preemption, questions of patentability, or whether the claims solve a technological problem that could result in a finding of patent eligibility.

Claim construction in connection with resolving the motion to dismiss is not a foregone conclusion.  The Court might be able to avoid that often onerous task where section 101 eligibility does not turn on claim construction or where the Court can just accept the most favorable construction to the plaintiff and still grant the motion.  In circumstances where claim construction could make the difference, the Court might hold the motion in abeyance until Markman, or simply deny the motion.

Turning to the merits, the defendant identified as representative the same two claims used by the plaintiff in the complaint to allege infringement.  The plaintiff countered by arguing that those claims were representative for infringement, but not patentability.  Judge Burke dodged the issue because he denied the motion.  Under Alice step one, Judge Burke examined whether the claims were “directed to” the abstraction of receiving, storing, processing and modifying information, or the less abstract idea of collecting and utilizing device use to generate device management instructions.  Judge Burke found that to be a “close call” and so it was best to turn to Alice step two to see if (abstract idea or not) the claims disclosed an inventive concept.  Judge Burke also found this issue difficult, but ultimately concluded the motion should be denied.  First, utilizing consumer usage information was a specific technological step forward (credited to plaintiff at the pleading stage).  Second, there was some level of detail in the claims on how to receive, store, process and modify information—enough detail for Judge Burke to conclude that the best course was to revisit the issue at summary judgment.