Patent application not identified in assignment agreement expressly listing assigned patents and applications was not assigned
The plaintiff appealed the district court’s dismissal of its infringement claims for three patents. One patent was dismissed under Rule 12(b)(1) finding no standing because there was no assignment of the patent, and all three patents were dismissed under Rule 12(b)(6) for ineligibility under 35 U.S.C. § 101. The Federal Circuit affirmed the 12(b)(1) dismissal and 12(b)(6) dismissals of the other two patents, but vacated and remanded the 12(b)(6) dismissal of the patent already dismissed under 12(b)(1).
The Federal Circuit reviews de novo dismissals under Rules 12(b)(1) and 12(b)(6). Because the assignment agreement “expressly listed” those patents and applications intended for transfer and did not recite the asserted patent’s then-pending application, the agreement did not include the asserted patent for assignment. Thus, the plaintiff had no standing to assert infringement of an unassigned patent. The Federal Circuit vacated and remanded, however, the 12(b)(6) dismissal of the same patent for ineligibility under § 101 because the assignee lacked standing. If a party filing suit is not the “patentee” and “otherwise fails to join the patentee,” the court “may not consider the merits of an affirmative defense.”
The Federal Circuit affirmed the 12(b)(6) dismissal of the other two patents as ineligible under § 101. One patent was directed to the abstract concept of “creating and using an index to search for and retrieve data” and employed XML-type tags to build the index, which was “not enough” to transform it into a patent-eligible invention. The other was directed to remotely accessing and retrieving user-specified information, which was “an age-old practice that existed well before the advent of computers and the Internet,” and employed a mobile interface that did “little more than provide a generic technological environment.”