What Is a Party’s Burden in Seeking a Determination of Patent-Ineligibility?

A court denied a patent infringement defendant’s motion to dismiss under FRCP 12(b)(6); the defendant, alleging that four patents were invalid under 35 U.S.C. § 101 for failing to recite patent-eligible matter, failed in its burden of stating a representative claim.  JSDQ Mesh Technologies LLC v. Fluidmesh Networks, No. 1-16-cv-00212 (D. Del. Sept. 6, 2016).

The patents at issue were US 7,286,828; US 7,916,648; RE43,675; and RE44,607.  The first question for the court was whether the plaintiff had met its burden of establishing a claim representative of all claims asserted across the four asserted patents.  A prior Delaware case had explained that the movant needed to show (1) that all of the claims related to the same abstract idea, (2) that claim construction was not needed, and (3) that there was some “set of facts that could be proven relating to preemption, questions of patentability, or whether the claims ‘solve a technological problem,’ that would result in a determination that one or more of the claims are patent-eligible.”

The defendant had “describe[d] claim 47 as ‘disclos[ing] a method of “providing a radio communication route” among nodes “independent of a central computer.”’”  The defendant then alleged that all asserted claims were “substantially similar, linked to the same general abstract ideas, and fail to add sufficiently more to render the claims patent-eligible.”

However, the plaintiff was able to show, in its response, that different claims had different distinct limitations.   The court therefore agreed that the defendant “ha[d] not adequately explained why the Asserted Patents relate to the same abstract idea embodied by claim 47 of the ’828 Patent.”  The defendant provided no “meaningful analysis” of why all claims were directed to the same abstract idea.  The defendant had this burden because the representativeness of claim 47 was in dispute.  The plaintiff “ha[d] sufficiently pled allegations to create a factual dispute as to whether the non-representative claims add inventive concepts that would result in patent eligibility.”

The court then stated its reluctance to grant the motion prior to claim construction.

Further, based on the present briefing and evidence, the court could not determine that there was no set of facts under which the claims could not be patent-eligible.

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