Virginia Innovation Sciences, Inc. v. Amazon.com, Inc., 1-16-cv-00861 (VAED January 5, 2017, Order) (O'Grady, USDJ)
Monday, January 9, 2017
Eight Video Signal Transfer Patents Invalid Under 35 U.S.C. § 101 Despite Earlier PTAB Findings of Nonobviousness
The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s video signal transfer patents encompassed unpatentable subject matter and rejected plaintiff's argument that the claims did not lack an inventive concept because the PTAB found they were not obvious during inter partes review. "Plaintiff cites multiple opinions from the PTAB stating that the specifications of the intermediary device were not taught by the prior art and were therefore not obvious under 35 U.S.C. §§ 102 or 103. . . . Although there is some caselaw to suggest that obviousness, novelty, and eligibility inquiries overlap, the most recent and persuasive opinions conduct the eligibility inquiry in isolation. . . . That is not to say that the §§ 102 and 103 analyses are completely irrelevant to the eligibility question. Indeed, the same component or claim that distinguishes the invention from the prior art may also provide the 'innovative concept' that directs the claims to patent-eligible subject matter. . . . [T]he USPTO's inter partes decisions do not provide an answer to the question at hand. What those opinions do, however, is highlight the aspects of the [patent] family that might constitute an 'innovative concept' under step two of [Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014)]."