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VOIT Technologies, LLC v. Del-Ton, Inc.

United States District Court, E.D. North Carolina, Western Division

January 11, 2018

DEL-TON, INC., Defendant.



         This cause comes before the court on defendant's motion to dismiss [DE 13] for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). Plaintiffs have responded, defendants have replied, and the matter is ripe for ruling. For the reasons discussed below, defendant's motion is granted.


         Del-Ton, Inc. is a firearms manufacturer based in Elizabethtown, North Carolina. They sell gun supplies and accessories over the internet using an online portal run by a third-party named Volusion. Plaintiff, VOIT Technologies, LLC, is a Florida company. Plaintiff has owned the patent in question, U.S. Patent No. 6, 226, 412 (abbreviated as the '412 Patent), since 2012. The patent was granted on May 1, 2001, with a priority date of March 24, 1995, and has since expired. On May 26, 2017, Plaintiff filed the instant lawsuit, alleging that Del-Ton's online shopping portal infringed on its patent, which patents "a method of buying and selling an item" through the internet. '412 Patent at 11:5. This is one of several lawsuits plaintiff has filed around the country alleging infringement of this patent, including in Texas, Colorado, and Florida. This is the first suit it has filed in this district. Defendant has moved to dismiss on the grounds that what plaintiff claims to have patented cannot be patented, and so the patent is invalid.


         A motion to dismiss tests the legal sufficiency of the complaint. See Papasan v. Allain, 478 U.S. 265, 283 (1986). When acting on a motion to dismiss under Rule 12(b)(6), "the court should accept as true all well-pleaded allegations and should view the complaint in a light most favorable to the plaintiff." Mylan Labs., Inc. v. Matkari, l F.3d 1130, 1134 (4th Cir. 1993). A motion will be granted when it "appears certain that the plaintiff cannot prove any set of facts in support of his claim entitling him to relief." Edwards v. City of Goldsboro, 178 F.3d 231, 244 (4th Cir. 1999). Whether something is patentable is a question of law. OIP Techs, Inc. v., Inc. 788 F.3d 1359, 1362 (Fed. Cir. 2015). Therefore, patent eligibility can be evaluated at the motion to dismiss stage. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014).

         I. Claim Construction

         A preliminary issue is whether a claim construction hearing is necessary here before determining the validity of the patent. This Court finds that it is not. "[C]laim construction is not an inviolable prerequisite to a [patent's] validity determination." Content Extraction & Trans., LLC v. Wells Fargo BankN.A., 776 F.3d 1343, 1349 (Fed. Cir. 2014). When there are claim construction disputes, it is generally preferable to resolve them prior to determining eligibility. Bankcorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012). A claim construction hearing brings clarity by developing further evidence to resolve the disputes. See InVue Sec. Prods, v. Mobile Tech, Inc., 2016 WL 1265263 at *2-3 (W.D. N.C. Apr. 14, 2016). Plaintiff argues that there are "glaring disputes as to the meaning of the '412 Patent's claims and the general nature of the invention itself." [DE 32 at 9]. Not all disputes in patent litigation are claim construction disputes. That the dispute here is not one to be resolved by claim construction is indicated by defendant's Reply, in which it argues that plaintiffs patent would be invalid even if this Court adopted all of plaintiff s constructions. [DE 24 at 7-8]. Because of this, this Court finds that claim construction is not needed, and will proceed immediately to the issue of whether plaintiffs patent is valid under 35 U.S.C. § 101.

         II. Patent Validity

         A patent may be granted to a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. If the patent in question is not eligible for patenting, a dismissal of a patent infringement claim is appropriate. E.g., Mankes v. Fandango, LLC, 2017 WL 782291 at *4-5 (E.D. N.C. Feb. 28, 2017). The burden of establishing invalidity is on the party asserting that invalidity. 35 U.S.C. § 282.

         The Supreme Court has articulated a two-part test for determining whether a concept is patentable. Alice Corp. Pty. Ltd. V. CLS Bank Intern., 134 S.Ct. 2347, 2355 (2014). The first question is "whether the claims at issue are directed to a patent-ineligible concept, " such as a natural phenomenon or an abstract idea. Id. If so, the inquiry moves to step two: whether there is an "inventive concept-i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself." 7tf.

         A. Patent-Eligible Concepts

         Here, then, the first issue is whether what plaintiff has in its '412 patent is patent-eligible or not. This Court finds that it describes an abstract idea, and so it is not.

         Abstract ideas, principles, fundamental truths, original causes, or motives cannot be patented. Le Roy v. Tatham, 14 How. 156, 175 (1853). The distinction separates the descriptive from the generative. This is because patents are designed to protect that which an individual can lay claim to. Id. If a creator is articulating something that already existed, ...

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