Wednesday, August 19, 2015

Pre-Markman Invalidity Challenge Under 35 USC § 101 Premature

The magistrate judge recommended denying defendants' motion to dismiss plaintiff's claims for infringement of its financial product patents for lack of patentable subject matter as premature because claim construction had not occurred. "[I]t seems a definitive ruling on eligibility before claim construction is only warranted in narrow circumstances, making such a ruling the exception rather than the rule. The need for claim construction is especially apparent here, where Defendants dispute the meaning of various terms among the various claims it purports to be representative of all Asserted Patents. . . . The difficulty of making a substantive ruling on the validity of an issued patent in what is — in essence — a complete vacuum cannot be understated. While the claim language of some patents may be so clear that the court need only undertake a facial analysis to render it invalid at the pleading stage, that will not be the norm and is certainly not the case here."

Phoenix Licensing, LLC et al v. CenturyLink, Inc., 2-14-cv-00965 (TXED August 17, 2015, Order) (Payne, M.J.)

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