Chief Judge Stark Finds Three Patents Invalid Under Section 101 on Rule 12(c) Motion

Chief Judge Stark has granted a motion for judgment on the pleadings pursuant to Fed. R. Civ. P. 12(c) on the grounds that certain claims of certain patents asserted by Intellectual Ventures are invalid under 35 U.S.C. § 101.

Judge Stark’s opinion addressed three patents. The first, U.S. Patent No. 6,115,737, discloses “a system that facilitates network based interactions between a customer and a service provider.” Intellectual Ventures I LLC v. AT&T Mobility LLC, et al., C.A. No. 12-193-LPS, Memo. Op. at 11 (D. Del. Dec. 30, 2016). Judge Stark found that the challenged claims of this patent were “directed to the abstract idea of account management” which the patent specification makes clear is “a fundamental economic practice long prevalent in our system of commerce.” Moreover, the added limitations of “accessing a network, entering a request, displaying the request, accepting the request via a CCSN/IG, and remotely processing the request” were insufficient to add an inventive step to this abstract idea, particularly because the specification describes “the CCSN/IG as a standard gateway, running standard software, using well-known protocols.” Id. at 12-16.

The other two patents-in-suit, Nos. 8,078,200 and 7,450,957, were each directed to a “method and system for controlling the use of a short message service . . . [that] enables users to block and screen short message service (“SMS”) messages based on predetermined criteria.” Id. at 20. Judge Stark found this to be an abstract idea because the common specification “acknowledges that ‘[t]he concept of blocking and screening messages is a . . . long-practice concept’ . . . [in which] each step in claim 1 – receiving, screening, and the forwarding or blocking a message based on predetermined criteria – could be analogously performed by a human, instead of by a computer.” Id. at 21. Further, the claims at issue “provide[d] no further inventive concept” because “[l]imiting the claims to ‘one field of use’ – here, SMS technology – is insufficient to confer patent eligibility.” Id. at 22-23.

An additional interesting point in Judge Stark’s analysis concerns the claim construction order, which the Court issued in March 2015. The plaintiff argued that the claim construction order relied on factual matters outside of the pleadings and, therefore, a Rule 12(c) judgment on the pleadings could not be based on the claim construction order. Judge Stark rejected this argument, finding that because claim constructions is a question of law, “the Court may take notice of and rely on its claim construction opinion without converting Defendants’ Motion into a motion for summary judgment.” Id. at 9-10.

Intellectual Ventures I LLC v. AT&T Mobility LLC, et al., C.A. No. 12-193-LPS (D. Del. Dec. 30, 2016).

UPDATE: On August 23, 2017, Judge Stark issued a memorandum opinion denying the plaintiff’s motion for partial reconsideration of the Section 101 decision and granting in part the defendants’ motion for summary judgment that additional patent claims were ineligible under Section 101. In denying the motion for reconsideration, Judge Stark rejected the plaintiff’s contentions that a new unprecedential opinion from the Federal Circuit represented an intervening change in controlling law and that the PTAB’s decision, issued before Judge Stark’s prior decision, denying institution of CBM review of one patent was new evidence. Intellectual Ventures I LLC v. T-Mobile USA, Inc., et al., C.A. No. 13-1632-LPS, Memo. Op. at 10-12 (D. Del. Aug. 23, 2017). Moreover, Judge Stark went on to grant the defendants’ motion for summary judgment of patent ineligibility for seven challenged claims, but found three of the challenged claims to be patent eligible. Id. at 15-32.

Intellectual Ventures I LLC v. T-Mobile USA, Inc., et al., C.A. No. 13-1632-LPS (D. Del. Aug. 23, 2017).

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