In a recent decision, Judge Richard G. Andrews granted a motion to dismiss on the grounds that the asserted patent claimed an abstract idea that was ineligible for patent protection under 35 U.S.C. § 101. Ubicomm, LLC v. Zappos IP, Inc., C.A. No. 13-1029-RGA (D. Del. Nov. 13, 2013). As Judge Andrews explained, “[a]t the motion to dismiss stage a patent claim can be found directed towards patent ineligible subject matter if the ‘only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility.’” Id. at 3 (quoting Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) (emphasis in original)). Here, between the time the defendant moved to dismiss and oral argument on the motion, the plaintiff submitted its proposed claim constructions at the Court’s request. Id. at 13 n.6. Based on the plaintiff’s own construction of the only independent claim at issue, the Court found that “the abstract idea at the heart of the claim is the very concept of a conditional action.” Id. at 6.
The Court explained that “[t]he fundamental role that the concept of conditional actions play in numerous disciplines is sufficient to warrant it protection as an abstract idea, because its patenting would impede innovation[,] more than it would tend to promote it.” Id. (internal quotation marks omitted). To support its decision, the Court added that the Supreme Court and Federal Circuit both have found ideas less abstract than a conditional action to be ineligible for patent protection. Id. at 7 (referring to hedging in Bilski v. Kappos, 130 S. Ct. 3218 (2010) and processing information through a clearinghouse in Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)). The Court then considered whether the rest of the claim included limitations that narrow it so as to avoid covering the full abstract idea, but found no such sufficient limitations. Id. at 7-8. The Court found instead that the limitations “are not more than the incorporation of a generic computer into the claim, which is not sufficient to make an abstract idea patentable.” Id. at 9.