Motivation Innovations, LLC v. PetSmart, Inc., 1-13-cv-00957 (DED January 12, 2016, Order) (Robinson, J.)
Thursday, January 14, 2016
Discount Redemption Patent Invalid Under 35 U.S.C. § 101
The court granted defendant's motion for judgment on the pleadings that plaintiff's discount redemption patent was invalid for lack of patentable subject matter and found that the claims lacked an inventive concept. "[E]ven though most of the patent claims now being challenged under§ 101 would have survived such challenges if mounted at the time of issuance, these claims are now in jeopardy under the heightened specificity required by the Federal Circuit post-Alice. Moreover, it is less than clear how a § 101 inquiry that is focused through the lens of specificity can be harmonized with the roles given to other aspects of the patent law (such as enablement under § 112 and non-obviousness under § 103), especially in light of the Federal Circuit's past characterization of § 101 eligibility as a 'coarse' gauge of the suitability of broad subject matter categories for patent protection. . . . Plaintiff argues that the invention is 'a specific method and system for discount offer redemptions [containing] specific limitations;' such invention is 'novel and inventive because ... it had not been [previously] known to use a single coupon with one 'indicia' to redeem offers on multiple products, or to create and use a database of individual customer's purchasing history while doing so.' The inventive concept of using a 'machine readable identification code' to take discount offers and track customer purchasing habits, however, is not an internet (or computer) centric problem. Nor do the method steps lend sufficient specificity to negate pre-emption."