Friday, September 14, 2012

Should a Challenge to a Patent’s Validity Based on Claiming Unpatentable Subject Matter (i.e., Bilski) be Addressed at the Pleading Stage?

The court granted defendant's motion to dismiss plaintiff's infringement claim for failure to state a claim where the court determined plaintiff's automatic pricing patent covered ineligible subject matter despite plaintiff's argument the issue was premature. "Plaintiff argues that it is premature to consider Defendant’s eligibility challenges to the patent because the Court has yet to construe any of the claim elements. . . . However, Plaintiff fails to explain how claims construction would materially impact the [35 U.S.C. § 101] analysis in the instant case. . . . [The Federal Circuit] confirmed that it 'has never set forth a bright line rule requiring district courts to construe claims before determining subject matter eligibility'. . . ."

OIP Technologies, Inc. v., Inc., 3-12-cv-01233 (CAND September 11, 2012, Order) (Chen, J.).

The court denied without prejudice defendant's motion to dismiss plaintiff's infringement action for failure to state a claim due to lack of patentable subject matter. "[Defendant] argues that the patents-in-suit do not claim patent eligible subject matter and are thus, invalid under 35 U.S.C. § 101. . . . The Federal Circuit has held that claim construction is an important first step in any § 101 analysis. The Court agrees that claim construction briefing, along with supporting evidence, may be necessary to determine whether the patents-in-suit contain patent-eligible subject matter. Accordingly, the Court denies Defendant’s Motion to Dismiss without prejudice."

Phoenix Licensing, LLC, et. al. v. Aetna Inc., et. al., 2-11-cv-00285 (TXED September 12, 2012, Order) (Gilstrap, J.).

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