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Judge Robinson invalidates YYZ, LLC’s patents-in-suit under 35 U.S.C. § 101

Judge Robinson recently considered cross-motions for summary judgment on the validity of U.S. Patent Nos. 7,062,749 and 7,603,674 pursuant to 35 U.S.C. § 101.  YYZ, LLC v. Hewlett-Packard Company, et al., C.A. Nos. 13-136-SLR, 13-579-SLR, 13-581-SLR (D. Del. Oct. 8, 2015).  The patents disclose a “computer-based apparatus and systems for measuring, monitoring, tracking and simulating enterprise [or business] communications and processes in an asynchronous messaging environment.”  Id. at 13-14 (internal quotation omitted) (alteration in original).

Providing examples for each asserted claim, defendants argued “that the “asserted claims of the patents-in-suit are directed to the abstract idea of collecting and saving information relating to a business process – a well-known, routine, and fundamental business practice.”  Id. at 15.  In response, Plaintiff contended that the technologies of the patents are “very specific” and the invention directed to a “very specific” technological environment.  Id.  The Court disagreed, finding that the claims essentially recite a method for sending a copy of information to a central repository and storing the copied information, which is an abstract idea.  Id. at 15-16.  Judge Robinson also found that although “the asserted claims of the patents-in-suit operate in an asynchronous message-based communications environment and fix problems only existing in asynchronous environments[,]” this limitation was insufficient to “pass muster under the § 101 paradigm.”  Id. at 17.  More specifically, Judge Robinson held that:

To broadly claim a method of accomplishing routine functions requires more than just an “apply it” directive, even in a specific technical environment such as the one at bar. A component that “can be configured” to perform the claimed function is neither sufficiently described nor sufficiently innovative to transform the inventive concept at bar into patent-eligible subject matter.

Id. at 19.

Note that in coming to this conclusion, Judge Robinson considered extrinsic evidence, namely an expert declaration submitted by plaintiff, because such evidence was “helpful in terms of understanding the state of the art at the time of the patents-in-suit, and whether the problem to which the patent was directed is solved using computer technology in unconventional ways.”  Id. at 16.

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