Section 101 Invalidity Challenge Barred by Failure to Disclose in Invalidity Contentions

The court denied defendant's motion for judgment on the pleadings of invalidity for lack of patentable subject matter because defendant failed to raise that invalidity ground in its invalidity contentions and rejected defendant's argument that patentability was a threshold issue similar to jurisdiction. "At first glance . . . [plaintiffs] would appear to be the owner of two patents worth little more than the paper they are printed on. There’s just one thing — [defendant] never told [plaintiffs] about any Section 101 problem. In this district, the rules are clear: a party opposing a claim of patent infringement must include in its invalidity contentions '[a]ny grounds of invalidity based on 35 U.S.C. § 101.' Invalidity grounds not disclosed 'are barred.' . . . [W]hile appellate courts have likened patent eligibility to jurisdiction, the focus of such comments are plainly on timing — that is, when Section 101 should be considered. They do not suggest that eligibility implicates Article III authority such that the issue is always subject to court review. . . . Maybe things would be different if at some point [defendant] had sought leave to amend its invalidity contentions. Then, perhaps, [defendant's] diligence and the prejudice to [plaintiffs] would matter more. But no such leave was sought, discovery is complete and trial is now just two months away. In sum, even at the cost of proceeding with patents that may have issues under Section 101, this court must hold parties to their failure to disclose contentions. This district's patent rules only work if there are consequences for failing to comply."

Good Technology Corporation et al v. MobileIron, Inc., 5-12-cv-05826 (CAND May 4, 2015, Order) (Grewal, M.J.)