Rothschild Location Technologies LLC v. Geotab USA, Inc., 6-15-cv-00682 (TXED December 5, 2016, Order) (Schroeder, USDJ)
Wednesday, December 7, 2016
Enfish is Not an Intervening Change of Law Sufficient to Amend Judgment of Invalidity Under 35 U.S.C. § 101
The court denied plaintiff's motion to amend an earlier judgment that the asserted claims of plaintiff's GPS patent were invalid for lack of patentable subject matter and rejected plaintiff's argument that Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. May 12, 2016), was an intervening change of law. "Enfish does not stand for the proposition that improvement to computer functionality is always sufficient to satisfy step one of [Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)]. . . . Enfish cautioned against describing claims at a high level of abstraction and untethered from the language of the claims. But in doing so, Enfish merely affirmed the existing law that claims are to be considered as a whole in order to evaluate what they are directed toward. That a court should not characterize an invention at too high of a level of abstraction, and should consider as a whole what a claim is directed toward, has previously been articulated in prior § 101 decisions, and does not present a change in the law. . . . [A]t the most, Enfish and subsequent cases suggest 'that there is considerable overlap between step one and step two,' but that 'whether the more detailed analysis is undertaken at step one or at step two, the analysis presumably would be based on a generally-accepted and understood definition of, or test for, what an 'abstract idea' encompasses.'"