United States District Court, E.D. North Carolina, Western Division
TERRENCE W. BOYLE / UNITED STATES DISTRICT JUDGE.
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
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.
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. Amazon.com, 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).
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. §
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.
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.
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.
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, ...