Magistrate Judge Christopher J. Burke recently issued a Report and Recommendation granting-in-part defendant’s Rule 12(b)(6) motion that plaintiff’s patents are invalid under 35 U.S.C. § 101. Yodlee, Inc. v. Plaid Technologies Inc., No. 14-1445-LPS (D. Del. May 23, 2015). Judge Burke previously denied defendant’s motion to stay pending resolution of this motion. The Court issued its claim construction in this case in January. Judge Burke noted that claim construction was particularly helpful here because of the “breadth” of defendant’s motion:
At the time that the Motion was filed, Plaid was seeking the dismissal of all 162 claims of all seven patents-in-suit. That kind of a request, in a case with this many patents and claims at issue, sought a huge early investment of judicial resources-resources that might need to be re-invested at the summary judgment stage (if, for example, the Rule 12 Motion was not well taken as to some or all patents-in-suit). In the Court’s view, under the weight of that request, the best practicable path was to first obtain the District Court’s decision on claim construction before rendering a decision on the instant Motion-thus narrowing the scope of possible outstanding legal issues that might be relevant to Plaid’s Section 101 affirmative defenses.
Id. at 5.
Defendant focused on one representative claim per patent for is § 101 analysis., but the Court also addressed “how to assess the remaining asserted claims in each patent”; as well as identified factual disputes affecting “its ability to render a final decision on eligibility under Section 101.” Id. at 8-9. Below is the Court’s determination on for each patent.
6,199,077 – relating to the field of Internet navigation – Denied
The Court determined that it was not “clear cut” whether claim 7 was directed to the abstract ideas of “gathering data specific to a person from a plurality of Internet sites,” and “logging into websites and gathering personal data from them.” Id. at 18-21. But, ultimately, Judge Burke determined that Plaid did not establish that the claim failed to contain an inventive concept, primarily because the claim includes a “software gathering agent” that makes it more likely to be “not merely routine or conventional use” of software. Id. at 22.
6,317,783 – relating to automated aggregation and delivery of electronic personal information – Denied
The Court determined that claim 1 was not directed to an abstract idea because the “idea” identified by defendant “sweeps too broadly, and does not incorporate the key concept in the claim that the patentee calls out as the rationale for the invention.” Id. at 27. Regardless, issues of fact remained as to whether an inventive concept is claims, rendering dismissal inappropriate. Id. at 28-29.
6,510,451 – relating to dividing a “main user task” into multiple sub-tasks to be performed by web-based services – Granted
The Court agreed with defendant that claim 8 was directed to an abstract idea, that is “the longstanding business practice of identifying sub-tasks within a larger task, managing completion of those sub-tasks, and communicating the results to the client.” Id. at 35 (alterations omitted). Judge Burke also found that claim 8 did not require anything more than conventional software-based technology. Id. at 43.
7,263,548 & 7,424,520 – relating to the field of network information services including data gathering and transmission – Granted
The Court found that the claims were directed to “the abstract idea of ‘transforming date from one form to another.'” Id. at 47. Judge Burke also found that the claims did not recite an inventive concept because while they did require “that the ultimate format of the translated information be ‘compatible with’ ‘an application, other than an Internet browser application, . . . they say nothing about how that translation is to be accomplished.” Id. at 54 (emphasis in original).
7,752,535 & 8,266,515 – relating to gathering and presenting information through push or pull technology – Denied
The Court found that the claim 6 and claim 7 of these patents, respectively, were not directed to an abstract idea. In short, Judge Burke determined that the claimed inventions build on the technology described in the ‘077 patent, adding the “value of having a categorization system that grows and improves in its ability to do its job, based on the consistent incorporation of new information.” Id. at 60.
UPDATE: On January 27, 2017, Judge Stark adopted the report and recommendation and overruled objections by both parties.