United States District Court, W.D. North Carolina, Charlotte Division
D. Whitney, Chief United States District Judge
MATTER is before the Court on Defendant's Motion
to Dismiss (Doc. No. 12) Plaintiff's Patent Infringement
Complaint (Doc. No. 1) pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure. Defendant requests this
Court dismiss Plaintiff's Complaint because the claims of
the patent-in-suit are invalid for claiming non-patentable
subject matter. After careful review, the Court DENIES
Defendant's Motion without prejudice.
in 35 U.S.C. § 101 of the Patent Act lies the
well-settled exception that “‘laws of nature,
natural phenomena, and abstract ideas' are not
patentable.” Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S.Ct. 1289, 1293 (2012)
(quoting Diamond v. Diehr, 450 U.S. 175, 185
(1981)). We must “tread carefully” in applying
the exception, “lest is swallow all of patent law,
” Alice Corp. Pty. Ltd. v. CLS Bank Int'l,
134 S.Ct. 2346, 2354 (2014), because “all inventions at
some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.”
Mayo, 132 S.Ct. at 1293-94.
a claimed patent-in-suit falls within this exception
“rests upon an examination of the particular
claims” using a two-step analysis. Mayo, 132
S.Ct. at 1294. First, the court must determine whether the
claims at issue are ‘directed to' an abstract idea,
a law of nature, or a natural phenomenon. Alice, 134
S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1296-97).
If not, the analysis ends because the patent-in-suit
satisfies § 101. Id. If so, then the court must
apply step two. Id. To overcome the second step, the
claim or claims must contain an inventive concept sufficient
to ‘transform the nature of the claim' into
patent-eligible subject matter. Id. In other words,
the patent-in-suit must do more than describe a natural law
or abstract idea and instruct the reader to “apply
it.” Mayo, 132 S.Ct. at 1297. It must be
“sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the
[ineligible concept] itself.” Alice, 134 S.Ct.
at 2355 (quoting Mayo, 132 S.Ct. at 1294); see
also Parker v. Flook, 437 U.S. 584 (1978).
applying the test, courts engage in a fact-intensive inquiry
often finding patent eligibility in “new and useful
concepts” that “improved on an existing process,
” or “those that were not well-known or
obtainable in the specific industry, ” E.g.,
Diehr, 450 U.S. at 177-78 (holding claim patent
eligible because it employed a “well-known”
equation designed to solve a “conventional industry
practice”); McRO, Inc. v. Bandai Namco Games Am.,
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (reversing
ineligibility where claimed process was “specifically
designed to achieve an improved result in conventional
industry practice”); while finding ineligibility where
a claim or claims is well-understood, conventional, or the
process has been previously engaged in by members in the same
field. E.g., Mayo, 1232 S.Ct. at 1298
(holding ineligibility where claims “were already
well-known in the art”); Bilski v. Kappos, 561
U.S. 593, 609 (2010) (holding ineligibility where patent
claimed a “fundamental economic practice long prevalent
in our system of commerce”); Gottschalk v.
Benson, 409 U.S. 63, 67 (1972) (holding ineligibility
where claim did not supply a “new and useful”
though the analysis is fact-intensive, a patent-eligibility
challenge under § 101 can be made prior to a formal
claim construction. See Bilski, 561 U.S. at 593
(determining patent eligibility prior to claim construction).
Indeed, courts have determined patent eligibility prior to
claim construction and even prior to discovery.
E.g., Bilski, 561 U.S. at 593; Content
Extraction and Transmission, L.L.C. v. Wells Fargo Bank, Nat.
Ass'n, 776 F.3d 1343 (Fed. Cir. 2014); Bancorp
Servs., L.L.C. v. Sun Life Assur. Co. of Canada, 687
F.3d 1266, 1273-74 (Fed. Cir. 2012).
instant case, however, a patent-eligibility determination is
premature. A complaint, answer, the patent-in-suit, and the
parties' memorandum in support of and against
Defendant's Motion are insufficient to give the Court a
“full understanding of the basic character of the
claimed subject matter.” Bancorp, 687 F.3d at
1273-74 (“We note, however, that it will ordinarily be
desirable-and often necessary-to resolve claim construction
disputes prior to a § 101 analysis . . . .”). Even
further, the parties vigorously dispute the characterization
of the claimed patent-in-suit. (Docs. Nos. 13, 23). In the
absence of stipulated constructions, this Court cannot fairly
apply § 101. See Invue Sec. Prods., Inc. v. Mobile
Tech, Inc., No. 3:15-CV-00610, 2016 WL 1465263, at *3
(W.D. N.C. April 14, 2016).
the Court DENIES Defendant's Motion to Dismiss (Doc. No.
12) without prejudice. Defendant is free to reassert
its patent-ineligibility ...