Magistrate Judge Burke recommends partial grant of motion to dismiss based on Section 101

In Triplay, Inc., et al. v. Whatsapp Inc., C.A. No. 13-1703-LPS (D. Del. Apr. 28, 2015), Magistrate Judge Christopher J. Burke considered recommended that Defendant’s motion to dismiss due to lack of patentable subject matter be granted as to one claim of the patent-in-suit, and denied without prejudice as to the remaining claims.  The patent-in-suit is U.S. Patent No. 8,332,475 and entitled “Messaging System and Method,” and is directed to “a field of electronic messaging and, in particular, to cross-platform messaging.”  Id. at 2.

As a threshold issue, while Defendant sought to invalidate all claims of the patent-in-suit, the Court declined to address claims that had not been the focus of argument and that had not been “clearly asserted” against Defendant.  Id. at 12.  The Court rejected Defendant’s position that it need not separately evaluate the invalidity of every claim “as long as the Court analyzes one claim that is ‘sufficiently similar’ to others,” observing that Defendant had not shown the key claims (namely, claims 1 and 12) to be “representative” and that “Defendant bears the burden to demonstrate that its asserted Section 101 defense is well taken as to each claim.”   Id. at 13.

The Court concluded that claims 1 and 12 were directed to an abstract idea. Similar to the claims in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed Cir. 2014), “the majority of the limitations of the claims at issue . . . describe only an abstract idea . . . lacking any concrete or tangible application, and their articulation accounts for much of the claim’s language and limitations overall.”  Id. at 20 (internal quotation marks omitted).  The Court found the case distinguishable from DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014), explaining that “the clear majority of the claim language that is at issue here is not ‘necessarily rooted in computer technology[,]’ nor in the technology of electronic communications devices. Instead, the majority of that claim language speaks to an abstract idea (converting and forwarding messages, so that the messages are sent in a format and layout in which they can be received by a recipient) that has long been used to resolve problems in the area of communications (electronic and otherwise), and that can potentially be applied in just about any communications context, depending on the means of communication.” Id. at 25.

As to the method claim (12), the Court then concluded that this claim was invalid as lacking an inventive concept.  See id. at 28-36.  However, the Court found that the system claim (1), although it “largely mirrors the structure of claim 12,” required claim construction on its additional “access block”  and “media block” elements, which the Court determined could add significant limitations to render the claims patent eligible, before determining patent eligibility under Section 101.  See id. at 38-40.

Accordingly, the Court recommended that the motion be granted as to claim 12 and denied without prejudice as to the remaining claims of the patent-in-suit.

Update:  On August 10, 2015, Chief Judge Leonard P. Stark adopted Magistrate Judge Burke’s Report and Recommendation over the parties’ objections, with the exception of the recommendation to deny the Motion to Dismiss without prejudice to renew as to all claims other than claim 12.  The Court granted the motion as to claim 12, and the motion “remain[ed] pending” as to all remaining claims.  Memorandum Order at 2.  Defendant had objected to Judge Burke’s findings that claim 1 had to be construed before determining patent ineligibility and that “the other claims of the ‘475 patent could not be assessed given the parties’ lack of attention to them.”  Memorandum Order at 1.  To that end, the Court overruled these objections, and further instructed the parties to submit letter briefs to address any claim construction issues to address before Defendant renewed its motion as to claim 1, and also requested letter briefing on “whether any of the dependent claims of the ‘475 patent include limitations that would make it inappropriate to analyze claims 1 and 12 as representative claims for purposes of deciding Defendant’s Motion to Dismiss.”  Id.  A copy of Chief Judge Stark’s  Order is below.

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