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Judge Stark grants motion for judgment on the pleadings invalidating patent under § 101

Judge Leonard P. Stark recently granted Defendants’ motion for judgment on the pleadings of invalidity of Plaintiff’s U.S. Patent No. 5,359,643 under 35 U.S.C. § 101. Gammino v. American Telephone & Telegraph Co., C.A. No. 12-666-LPS (D. Del. Sept. 8, 2015).  The method claims at issue “are generally directed to receiving a ‘telephone dialing digit’ and a phone number, receiving payment information for a call, and completing the call if payment is adequate.”  Id. at 2.  Applying the U.S. Supreme Court’s decisions in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) and Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), Judge Stark found that the claims are directed to an abstract idea:

In sum, claim 1 amounts to nothing more than an arbitrary set of steps defining how a conventional telephone may be used to select a method of payment and complete a call, not unlike a user’s manual for any number of long-extant devices. Thus, the Court concludes that representative claim 1 of the ‘643 patent- and, therefore, all of its claims -is directed to an abstract idea. It is necessary, then, to proceed to the second step of the analysis.

Id. at 13.  Moreover, Judge Stark determined that additional claim limitations did not include an “inventive concept” to render the subject matter patent-eligible because “[t]he ‘643 patent’s claims are implemented using generic telephony technology that existed well before the priority date of the ‘643 patent.”  Id. 


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