Lack of Clarity for Patent-Ineligibility Weighs Against Decision at the Pleading Stage

The court denied without prejudice defendant's motion to dismiss on the ground that plaintiff’s electronic component placement system patent encompassed unpatentable subject matter because claim construction had not yet occurred. "'Courts . . . have denied motions to dismiss where the factual record is not yet sufficiently developed, such that the general character of a patent and its limitations are unclear.' . . . 'In this case, the parties dispute the basic character of the claimed subject matter.' Consequently, even construing the claims in Plaintiff’s favor, as the Court must at this stage, the Court is unable to identify the purpose of the [patent-in-suit], a necessary step in determining whether the [patent’s] claims are directed toward an abstract idea. Perhaps because the Supreme Court has declined 'to delimit the precise contours of the "abstract ideas" category,' the Court simply does not yet 'know it when [it] see[s] it.' Accordingly, the Court treads lightly, particularly given the Supreme Court’s admonition that the 'exclusionary principle' of patent-ineligible subject matter must be construed carefully 'lest it swallow all of patent law.'"

Palomar Technologies, Inc. v. MRSI Systems, LLC, 3-15-cv-01484 (CASD March 11, 2016, Order) (Sammartino, J.)