Fact Issues as to Performance of Claims by a “Person With Pen and Paper” Bar Resolution of 35 U.S.C. § 101 Eligibility Prior to Claim Construction​

The magistrate judge recommended denying defendant's motion to dismiss on the ground that plaintiff’s gemstone evaluation patent encompassed unpatentable subject matter because the issue required summary judgment and claim construction proceedings. "An important facet of [defendant's] Motion is its contention that 'each step of the claimed methods can be performed by a person with pen and paper using basic ray tracing techniques while following well-known mathematical formulas.'. . . Resolving this fact question (or even considering it) would require the Court to consider evidence outside the pleadings. . . . Accordingly, the Court believes that [defendant's] motion must be resolved at the summary judgment stage. . . . This case is an example of one in which claim construction is likely to resolve critically important questions that bear on subject matter eligibility."

Diamond Grading Technologies LLC v. American Gem Society et al, 2-14-cv-01161 (TXED September 12, 2016, Order) (Payne, MJ)