Judge Sue L. Robinson recently granted a motion for judgment on the pleadings that U.S. Patent No. 5,612,527 is invalid under 35 U.S.C. § 101. Motivation Innovations, LLC v. Petsmart, Inc., No. 13-957-SLR (D. Del. Jan. 12, 2016). The ‘527 patent “disclose[d] and claim[ed] methods for redeeming discount offers by associating a machine-readable identification code, such as a barcode, with data identifying items to be offered at a discount.” Id. at 13. Judge Robinson discussed the evolution of cases since the Supreme Court’s Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014), noting:
the complete rejection of patentability for computer programs to the almost complete acceptance of such, to the current (apparent) requirements that the patent claims in suit (1) disclose a problem “necessarily rooted in computer technology,” and (2) claim a solution that (a) not only departs from the “routine and conventional” use of the technology, but (b) is sufficiently specific so as to negate the risk of pre-emption.
Id. at 10. As such, the Court’s analysis under § 101 is a difficult exercise. Id. at 11. Applying the Alice framework, Judge Robinson first determined that the claimed invention was directed to “the abstract idea of using coupons to provide discounts.” Id. at 16. Having found the claims were directed to a patent-ineligible concept, Judge Robinson turned to the next step in the Alice framework to determine whether additional limitations of the claims merely “recite conventional or routine activity or computer technology.” Id. Judge Robinson determined the claims were invalid because the additional limitations involved “‘routine and conventional’ computer technology to redeem discounts and track customer spending habits.” Id. at 17.