Post-Alice Issuance of Related Patent Does Not Inoculate Patent-In-Suit From Invalidity Under 35 U.S.C. § 101

The court granted defendant's motion for summary judgment that plaintiff's search refinement patent was invalid for lack of patentable subject matter and rejected plaintiff's argument that its patent was valid because a nearly identical continuation patent had just been issued by the PTO. "[Plaintiff] argues the post-Alice issuance of a continuation patent similar to the [patent-in-suit] confirms the validity of the asserted claims of the [patent]. . . . [Plaintiff] notes a Corrected Notice of Allowance issued for the [continuation] patent . . . after the Supreme Court’s decision in Alice, purportedly adding further confirmation that the Patent Office believes these claims qualify for patent protection. . . . Although [plaintiff] states it provided the Patent Office with [defendant's] prior art, invalidity contentions, and expert report during the prosecution of the [continuation] patent, it does not aver [defendant] had raised its Section 101 contentions during that time period. It appears it had not. Also the fact that a Corrected Notice of Allowance issued post-Alice does not persuade the court of [plaintiff's] position on this issue. Were that fact determinative, [plaintiff's] position appears to be that any patent issued post-Alice would be inoculated from invalidity under Section 101. That is not the case."

Collarity Inc. v. Google Inc., 1-11-cv-01103 (DED November 25, 2015, Order) (Thynge, M.J.)