Tuesday, October 4, 2016

Eligibility Challenge to Marketing Systems Patents Premature Prior to Claim Construction​

The court denied without prejudice defendants' motion to dismiss on the ground that plaintiff's marketing system patents encompassed unpatentable subject matter because claim construction had not yet occurred. "Defendants argue that the claims at issue 'merely recite automation of traditionally mental and manual methods of using generic computer components and simplistic flow charts.' Defendants further argue that claim construction is not a necessary prerequisite given that all of the Asserted Patents would be directed to patent-ineligible subject matter 'under any reasonable construction,' and that the Court previously analyzed and construed the claims in each of their collective Asserted Patents during a prior case. . . . [T]he Court is persuaded that resolution of the issues urged in the motion is more appropriately addressed after the issuance of the claim construction order. The Federal Circuit has recognized that, as a general matter, 'it will ordinarily be desirable — and often necessary — to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.'"

Phoenix Licensing, LLC et al v. Advance America, Cash Advance Centers, Inc., 2-15-cv-01367 (TXED September 30, 2016, Order) (Gilstrap, USDJ)

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