The District of Delaware and the Central District of California have both recently invalidated patents under 35 U.S.C. § 101 without first construing the claim terms, instead deciding the cases on the pleadings alone. These software-patent cases follow in the wake of the United States Supreme Court’s ruling in Alice Corp. v. CLS Bank Intl., which invalidated claims to a computer-implemented escrow service because the claims were “drawn to the abstract idea of intermediated settlement, [and] merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.” (Slip. op. at 1).
In Tuxis Tech v. Amazon, the Delaware District Court considered a claim directed to a computer-implemented method for up-selling (i.e., seeking additional purchases based on a buyer’s initial purchase and preferences). The plaintiff conceded that the notion of up-selling was indeed merely an abstract idea but argued that several limitations – such as an electronic communications device, and the creation of a data element related to the buyer – conferred patent eligibility. Judge Andrews disagreed, dismissing the case on the pleadings while holding that none of the limitations the plaintiff pointed to are “meaningful.” For example, the court noted that up-selling via an electronic communications device, as opposed to conducting the sale in a brick-and-mortar store, was not an inventive concept above and beyond the abstract idea of up-selling that is at the heart of the claim. Tuxis Tech. v. Amazon.com, No. 13-1771-RGA (DDE September 3, 2014). Notably, Judge Andrews dismissed the case at the motion to dismiss stage, prior to a Markman hearing; he reasoned that a motion to dismiss is appropriate “if the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility.” (Slip. op. at 3 (internal citations omitted)). In another software-patent case decided this past week, the Central District of California followed Judge Andrew’s lead and found invalidity under § 101 at the motion to dismiss stage. The CDCA rejected the plaintiff’s argument that the motion to dismiss was premature due to factual disputes; the court instead agreed with the defendant that dismissal is not premature because claim construction is not purely a question of fact.
Eclipse IP LLC v. McKinley Equipment Corporation, 8-14-cv-00742 (CACD September 4, 2014) (Wu, J.).