Asserted Claims of Wireless Remote Control Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s wireless remote control patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "The court concludes that because the asserted claims are directed towards the result -- and therefore, abstract idea -- of wirelessly controlling remote devices, they are patent-ineligible. The specification refers to '⁠[a] method for controlling a remote device[] over a wireless connection.' 'underscor[ing] that [the asserted claims are] directed to an abstract concept.' More importantly, the asserted claims provide only for generic processes and components to achieve that result. . . . And although the Patent purports to solve a number of problems with remotely controlling devices, it does not solve those problems through an improvement in any specific technology."

Uniloc USA, Inc. et al v. HTC America, Inc., 2-17-cv-01558 (WAWD June 15, 2018, Order) (Robart, USDJ)

Lack of Specific Dosage Amounts and Frequencies of Administration Does Not Render Claims for Method of Treating Pain Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to reconsider an earlier order granting plaintiff's motion for summary judgment that the asserted claims of its pain treatment patents did not encompass unpatentable subject matter. "The fact that certain of the claims do not recite specific dosage amounts and frequencies of administration is not fatal to the patent eligibility of the 'PK-only' claims under 35 U.S.C. § 101. A claim to a method of treating an illness is typically more than an expression of a natural law; if it were otherwise, pharmaceutical patents would be hard to come by, as most methods of treatment using pharmaceuticals consist simply of the administration of a drug that affects the human body in a manner that is dictated by laws of nature. . . . The claims in all of the claims asserted in this action . . . are 'treatment steps' -- that is, directed at a new and useful method of treating pain in a certain population of patients using a specific set of hydrocodone bitartrate formulations. For that reason, the Court views the claims as not directed to unpatentable subject matter by claiming patent protection for a natural law."

Pernix Ireland Pain Ltd. et al v. Alvogen Malta Operations Ltd., 1-16-cv-00139 (DED June 8, 2018, Order) (Bryson, CJ)

Genotyping Patent Invalid Under 35 U.S.C. § 101

Following a jury trial, the court granted plaintiff's motion for judgment as a matter of law because the asserted claims of plaintiff’s labrador retriever genotyping patent encompassed unpatentable subject matter and found that the claims were directed toward a natural phenomenon. "⁠[T]he patent utilizes a number of scientific terms which at first review appear difficult to understand and make the patent appear impressive on its face. However, when the language is explained, the patent simply states that the search for the mutation involves the laboratory examination of Labrador Retriever DNA, which resulted in the discovery of the mutation, which in combination with similar mutations of Labrador Retrievers who mates with a carrier results in offspring having a higher probability of inheriting the mutation. The mutation itself and the fact that it is inherited through male and female dog carriers mating are both natural phenomena."

Genetic Veterinary Sciences, Inc. d/b/a Paw Prints Genetics v. LABOklin GmbH & Co. KG et al, 2-17-cv-00108 (VAED May 14, 2018, Order) (Morgan, SJ)

Pre-Alice Finding of Validity Collaterally Estops Defendant From Challenging Validity Under 35 U.S.C. § 101

The court granted plaintiff's motion for summary judgment that defendant's challenge under 35 U.S.C. § 101 was barred by collateral estoppel because a jury found the patent-in-suit valid in the parties' prior action. "While the Federal Circuit has yet to address squarely whether multiple theories of invalidity constitute 'different' issues for collateral estoppel purposes, the majority of courts that have considered the question view patent validity as a single issue. . . . [E]ven if [Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)] had constituted a change in the law, [defendant] does not explain how pre-Alice law would have precluded [it] from bringing a Section 101 defense. . . . There is no evidence that a Section 101 defense was completely unavailable to [defendant] under the framework set out in [Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1282 (2012)], or that such a challenge would have been futile prior to Alice."

XpertUniverse, Inc. v. Cisco Systems, Inc., 3-17-cv-03848 (CAND May 8, 2018, Order) (Seeborg, USDJ)

Questions of Fact Concerning Inventive Concept Preclude Dismissal for Invalidity Under 35 U.S.C. § 101

The court denied without prejudice defendant's motion to dismiss because plaintiff sufficiently pleaded that the asserted claims of its data organization patent encompassed patentable subject matter and that the claims did not lack an inventive concept. "Plaintiff contends that the [patent] solves a computer-specific problem by asking 'when a version should be deleted, not when it can be deleted.'. . . The statements in the specification, the allegations in the FAC and the language of Claim 8 . . . show that the FAC sufficiently alleges that deleting data in response to the combination of a particular time stamp and a measureable characteristic, 'thereby to increase a capacity of said memory' shows an inventive concept to the claims. Whether this recitation reflects a protectable, inventive concept is a question of fact."

Sound View Innovations, LLC v. Hulu, LLC, 2-17-cv-04146 (CACD April 11, 2018, Order) (Kronstadt, USDJ)

Caller ID Patent Claims Invalid Under 35 U.S.C. § 101

The court granted defendants' motion to dismiss because the asserted claims of plaintiff’s caller ID patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "Plaintiff disputes that the purpose of the Claims is abstract. According to Plaintiff, the purpose is 'to indicate to a subscriber to both call waiting and caller ID, who is already engaged in a call, using an audible tone signal, the existence of an incoming call from a third party whose directory telephone number has been flagged private.' Even accepting this purpose as stated by Plaintiff, the Court finds it to be directed to an abstract idea. That the claims involve functionality of known telecommunications equipment does not detract from this finding."

Morris Reese v. Sprint Nextel Corporation et al, 2-13-cv-03811 (CACD April 9, 2018, Order) (Wright, USDJ)

Patent for Displaying Location-Relevant Communications On a Phone Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s patent for displaying location-relevant communications on a phone encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "⁠[T]he claims of the Asserted Patents are best characterized as directed to: refreshing location-relevant communication services on a phone’s display by obtaining a current location from a location server, selecting communication services using logic in a datastore, and refreshing the display. . . . [T]he claims at issue do more than simply state a result (i.e., display communication services according to current location); they also recite the way in which it is accomplished (i.e., using location retrieved from the location server and functions stored in the datastore). Accordingly, because the specific improvement to the technology of user interfaces claimed in [Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)] was not an abstract idea, the Court must conclude that the similarly specific improvement to user interfaces claimed here is also not an abstract idea."

Local Intelligence, LLC v. HTC America, Inc. et al, 5-17-cv-06437 (CAND April 6, 2018, Order) (Davila, USDJ)