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Chief Judge Stark grants Section 101 motions

In a series of related actions, Chief Judge Leonard P. Stark granted Defendants’ motions to dismiss or for judgment on the pleadings based on Section 101, ruling that all claims of the patent-in-suit, entitled “Method and Apparatus for Conducting or Facilitating a Promotion,” were directed to patent-ineligible subject matter. E.g., Inventor Holdings, LLC v. Gameloft, Inc., C.A. No. 14-1067-LPS (D. Del. Sept. 30, 2015).  The patent relates to “a method and apparatus for distributing promotions to potential participants and for allowing the promotion participants to receive benefits associated with the promotions. The claimed methods are generally directed to “facilitating play of a game” on a “mobile device” or “computer-readable medium” in which a user receives an in-game benefit after a locked outcome of the game is unlocked using an unlock code associated with that outcome.” Id. at 1-2 (internal citations and quotation marks omitted).

The Court first concluded that certain disputed terms could be given their plain and ordinary meaning, and thus the Court could decide patentability at this stage without further claim construction resolution. See id. at 13-16. The Court also clarified that a clear and convincing evidence burden of proof did not apply to Defendants’ motions as there were no disputed material facts to resolve. Id. at 12 n.6.

Under the first prong of the ­Supreme Court’s Mayo/Alice test, the Court concluded that the patent was directed to an abstract idea because its claims did not “solve a problem specific to mobile devices,” and were similar to the claims at issue in, “for example, Bilski and Alice, which were directed to abstract ideas that could be implemented using generic computer technology.” Id. at 17 (emphasis in original). The Court also agreed with Defendants that the claims were directed to an abstract concept because they were directed to a “fundamental economic practice,” in other words “the economic strategy and abstract idea of ‘providing an ‘unlock code’ in exchange for a qualifying activity for an ‘outcome’ to reveal the [intra-game] benefit of the locked outcome.” Id. at 17-18 (alterations in original).

Finally, the Court concluded under the second Mayo/Alice step that the claims did not include a sufficient inventive concept. The claims were “implemented using generic mobile device technology” and this was insufficient to “impose meaningful limits on the scope of those claims.” Id. at 20-21. Further, while Plaintiff argued that the claims met the machine-or-transformation test because of their “use of a ‘mobile device’ in connection with the other claim limitations,” the Court observed that “many exemplary embodiments in the specification indicate that the mobile device is not integral to the performance of the claimed method,” thus “neither the claims nor the specification . . . recite any machine that plays a ‘significant part in permitted the claimed method to be performs.’” Id. at 22-23 (emphasis in original) (internal citations omitted). Further, the claims “tie[d] up use of the underlying ideas of the [patent],” id. at 23, and these claims were not analogous to the claims found patent-eligible in DDR Holdings because they “do recite standard use of a conventional mobile phone in a normal, expected manner,” id. at 24 (emphasis in original).

Accordingly, the Court concluded that the claims of the patent-in-suit were directed to patent-ineligible subject matter, and granted Defendants’ motions to dismiss or for judgment on the pleadings. Id. at 25.

 

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