Cancelled Independent Claim Must Be Considered in Determining § 101 Patentability of Dependent Claim

The court denied defendants' motion for summary judgment that plaintiff's casino patents were invalid for lack of patentable subject matter because defendants failed to consider independent and dependent claim terms as a whole. "The question . . . is whether the additional system elements of claim 1, considered as a whole together with the material of the dependent claims, are sufficient to transform the dependent claims into patent-eligible subject matter. But because Defendants incorrectly argue that the Court should ignore the elements of the cancelled independent claims, Defendants have not accounted for either (1) the majority of the elements of the challenged claims, or (2) the claims as a whole. . . . [I]t is . . . possible that the computer system elements combine to provide a sufficient 'inventive concept' beyond the abstract idea. This is a motion for summary judgment. . . . This burden of production is especially high here, where the movant is seeking to have patent claims invalidated. . . . Defendants provide no analysis for the majority of the elements of the challenged claims, instead relying only on USPTO reexamination proceedings unrelated to 35 U.S.C. § 101 to argue that those elements are not patent-eligible."

Ameranth, Inc. v. Genesis Gaming Solutions, Inc. et al, 8-11-cv-00189 (CACD January 2, 2015, Order) (Guilford, J.)