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Judge Andrews grants motion for judgment on the pleadings invalidating patent under § 101

Judge Richard G. Andrews recently granted Defendants’ motion for judgment on the pleadings of invalidity of Plaintiff’s U.S. Patent No. 5,826,034 under 35 U.S.C. § 101.  Novo Transforma Techs., LLC v. Sprint Spectrum L.P., et al., C.A. No. 14-612-RGA (D. Del. Sept. 2, 2015).  Applying the U.S. Supreme Court’s decision in Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), Judge Andrews found that “[t]he ‘034 patent claims the abstract idea of ‘translation.’ The claims do not solve a problem specific to the realm of computer networks, and the additional claim limitations do not amount to an ‘inventive concept.’  Therefore, the asserted claims of the ‘034 patent are invalid.”  Id. at 4.  Plaintiff argued that the claimed invention was not an abstract idea because “it addresses a problem that ‘specifically arises in the context of communication networks due to the presence of incompatible devices and formats.’  The ‘034 specification explains that the claimed invention addresses the problem of  ‘incompatibility between different communication services employing different media for communicating information.'”  Id. at 5.    Judge Andrews disagreed noting that “[i]ncompatible communication types have existed since before the emergence of computers and the Internet” and translating “into a different media form . . . is no different than the function of a translator.”  Id. at 6.   Moreover, Judge Andrews determined that additional claim limitations did not “render the subject matter patent-eligible” because “the ‘034 patent contemplates the conversion and delivery of physical messages[, a] problem [] not unique to electronic devices.”  Id. at 8.

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