Judge Robinson denies motion to dismiss pursuant to Section 101

In a recent Memorandum Opinion, Judge Sue L. Robinson denied defendant’s motion to dismiss pursuant to FRCP 12(b)(6), which alleged that plaintiff failed to claim patentable subject matter under 35 U.S.C. § 101. Improved Search LLC v. AOL Inc., C.A. No. 15-262-SLR (D. Del. Mar. 22, 2016). The first patent-in-suit, U.S. Patent No. 6,604,101 (“the ‘101 patent”) “relates generally to translation of query and retrieval of multilingual information on the web.” Id. at 13. As Judge Robinson explained, the ‘101 patent describes “a method and system for conducting a translingual search on the Internet and accessing multilingual websites through dialectal standardization, pre-search translation and post-search translation.” Id. The second patent-in-suit, U.S. Patent No. 7,516,154 (“the ‘154 patent”) is a continuation-in-part of the ‘101 patent and incorporates a system and method “to send a user one or more advertisements in his native language, also called as source language, over the Internet while the user is performing a cross language search.” Id. at 15. More specifically, “the server conducts a search in the database and returns to the user one or more advertisements relevant to the content word or keyword,” and the “advertisements are either in the source language or may be translated by the server from a target language.” Id. at 15-16.

Notably, Judge Robinson found that “[i]n trying to sort through the various iterations of the § 101 standard, the court looks to DDR as a benchmark.” Id. at 12 (citing DDR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014)).

As to the first step of the Alice framework, defendant attempted to “analogize[] the method of the ‘101 patent to a set of tasks performed by a human, [arguing] that the ‘101 patent is directed to the abstract idea of searching for documents in a foreign language by translating a modified search request.” Id. at 16-17 (citations omitted). Similarly, defendant argued “that the ‘154 patent is directed to two abstract ideas – translingual searching and advertising.” Id. at 17. Judge Robinson, however, provided the following analysis as to the first step under Alice:

That a method involving a computer and the internet may be broken down into a series of steps performed by a human does not resolve whether such method is an “abstract idea.” The continuum begins with methods that “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet” and progresses towards methods where “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR, 773 F.3d at 1275. The methods at bar do not perform a business method known from the pre-Internet world on the computer, instead, the methods contain an additional layer of complexity.

Without reaching a specific holding under the first step, Judge Robinson moved on to the second step of the Alice framework, and concluded that “the solution provided by the patents at issue is not a ‘routine and conventional’ use of computer and Internet technology.” Id. at 18. Judge Robinson explained that “[a]lthough the patents at issue use computers, the methods recite sufficiently specific steps, so as to ensure that the claims are ‘more than a drafting effort designed to monopolize the [abstract idea],’ and will not disproportionately tie up the use of the underlying ideas.” Id. at 18-19.

Moreover specifically, Judge Robinson found that “[t]he method of the ‘101 patent provides a specific series of steps designed to optimize search results and retrieve target language URLs or documents using search engine queries on the Internet,” and the steps include “extracting content words from a query, performing dialectal standardization of the words, and translation.” Id. at 18. Accordingly, Judge Robinson concluded that “[a]s in DDR, the ‘claims at issue here specify how interactions with the Internet are manipulated to yield a desired result.’” Id. Judge Robinson added that the “‘154 patent recites similar steps for translingual searching and adds the concept of searching a database of advertising to return advertising targeted to the content word.” Id.

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