Avago Technologies General IP (Singapore) Pte. Ltd. v. ASUSTeK Computer, Inc. et al, 3-15-cv-04525 (CAND April 25, 2016, Order) (Chen, J.)
Wednesday, April 27, 2016
MPEG Decoder Patent Not Invalid Under 35 U.S.C. § 101
The court denied defendant's motion to dismiss on the ground that plaintiff’s MPEG decoder patent encompassed unpatentable subject matter because the asserted claims were not directed to an abstract idea. "[T]he [Alice] step one inquiry may be a complicated matter if only because it is not clear what abstract means in the first place. The step one inquiry is further complicated by the fact that it is not always easy to say what a patent claim is 'directed to.' . . . Unfortunately, the fundamental concept or purpose of a claim can be expressed at varying levels of generality or specificity, which could then impact whether it is directed to an abstract idea (i.e., the more general the purpose, the more likely to be abstract). . . . [T]he purpose of the claims at issue is to decompress digital video using a single memory. That is the gist of the invention at issue. Given this purpose, the Court is satisfied that there is no genuine risk of preempting future research and development – i.e., [plaintiff] is not simply claiming an abstract idea in the attempt to lay claim to a building block of future research and development; the invention has specific configuration, not a broad abstract idea. . . . Because [defendant] has failed to establish that the claims at issue are directed to a patent-ineligible concept, i.e., an abstract idea, the Court need not address step two of Alice which embodies the inventive concept test."