Mantissa Coporation v. Ondot Systems, Inc. et al, 4-15-cv-01133 (TXSD August 11, 2016, Order) (Ellison, USDJ)
Thursday, August 18, 2016
Early 35 U.S.C. § 101 Eligibility Challenge Denied in Light of Enfish
The court denied defendant's motion to dismiss plaintiff's amended complaint on the ground that plaintiff’s identity protection patent encompassed unpatentable subject matter because claim construction had not occurred. "The Court granted the motion to dismiss [the original complaint] on the grounds that the patents are invalid because they are drawn to an abstract idea. . . . The Court is persuaded by the additional briefing that it should not make a final decision about patent eligibility until after claim construction has occurred. Defendants contend that 'it is the claims — not the specification or figures — that matter.' However, the Federal Circuit [in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] recently clarified the two-step process of determining whether a patent’s subject matter is eligible for patent protection. It described 'a stage-one filter to claims, considered in light of the specification, based on whether 'their character as a whole is directed to excluded subject matter.''. . . In its decision, the Federal Circuit reversed the district court. This reversal was largely based on the Federal Circuit's finding that 'the district court oversimplified . . . the claims and downplayed the invention's benefits.' By first allowing claim construction, the Court hopes to avoid that situation in this case."