Judge Robinson recently granted a motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) for lack of patentable subject matter. Judge Robinson ultimately concluded that “[g]iven the options illustrated in the specification and the broad claim language, the ‘inventive concept’ of the patents-in-suit does not pass muster under § 101. Even if the problem addressed were characterized as Internet-centric, the claimed solution is not described with enough specificity to place meaningful boundaries on the inventive concept.” Parus Holdings, Inc. v. Sallie Mae Bank, et al., C.A. No. 14-1427-SLR, Memo. Op. at 22 (D. Del. Oct. 8, 2015).
Of particular interest in the decision is Her Honor’s summation of the applicable case law: “In reviewing the post-Alice cases such as DDR and Intellectual Ventures, the court is struck by the evolution of the § 101 jurisprudence, from the complete rejection of patentabiliy 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. . . . Moreover, it is less than clear how a § 101 inquiry that is focused through the lens of specificity can be harmonized with the roles given to other aspects of the patent law (such as enablement under § 112 and non-obviousness under § 103), especially in light of the Federal Circuit’s past characterization of § 101 as a “coarse” gauge of the suitability of broad subject matter categories for patent protection. Given the evolving state of the law, the § 101 analysis should be, and is, a difficult exercise.” Id. at 11-12.
Her Honor continued, touching on procedural and evidentiary concerns: “The pre-emption concern is generally amenable to review in the context of a motion to dismiss or for judgment on the pleadings. The second requirement, which may well involve issues of fact relating to the state of the art in the technological environment involved, is more appropriately addressed after discovery in the context of a motion for summary judgment. Id. at 13.