Magistrate Judge Burke recently issued a report and recommendation that recommended denying several patent infringement defendants’ motions to dismiss for lack of patentable subject matter under § 101. Judge Burke first found that claim construction was not necessary in this case to perform the § 101 analysis. Execware, LLC v. BJ’s Wholesale Club, Inc., et al., C.A. No. 14-223-LPS, Report and Recommendation at 8-9 (D. Del. July 15, 2015). His Honor then rejected arguments that § 101 challenges are not amenable to Rule 12 motions. Id. at 10-13.
Judge Burke then compared the exemplary claim 1 of the patent-in-suit to several recent Federal Circuit cases addressing § 101 and found that the claims were not directed to an abstract idea: “[C]laim 1 references a specific ‘claimed solution’ (the use of a query dialog box that has particular features) to an identified problem . . . . [T]his proffered solution is one ‘rooted in computer technology in order to overcome a problem specifically arising in the realm of computer[s.]’” Id. at 19-27 (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
Finally, Judge Burke also went on to find that the patent-in-suit did not lack an inventive concept, although “[h]aving determined that claim 1 is not directed to an abstract idea under varying formulations of step one of the Alice test, the Court could end its analysis.” Id. at 29. His Honor concluded that “the presence of the query dialog box limitation in [the] patent amounts to the inclusion of an inventive concept, as it is a meaningful limitation on the underlying idea of ‘displaying, classifying, and organizing unspecified information (referred to as text data objects) in an unspecified transaction.’” Id. at 30-31. Judge Burke also rejected arguments to the contrary by defendants, including that “the process could be performed, in at least an analogous fashion, by two people using pen and paper.” “[A]lthough it may be technically correct to say that humans could use a pen and paper to perform a sorting process that is similar in some ways to the process called for by claim 1, it is hard to assert that this would ‘produce the actual effect of the invention.’. . . Moreover, Defendants have not cited any case where the Supreme Court or the Federal Circuit have held that a claim is patent ineligible based solely on the fact that an analogous method could be performed using pen and paper.” Id. at 32-35.