United States: Section 101 Motions To Dismiss Still Alive In District Courts

In Berkheimer and Aatrix, the Federal Circuit indicated that although patent eligibility under Section 101 is ultimately a question of law, the determination may have factual underpinnings that, at least in some cases, render it inappropriate for motions to dismiss or for summary judgment. The Federal Circuit did state, however, that "[p]atent eligibility has in many cases been resolved on motions to dismiss or summary judgment. Nothing in this decision should be viewed as casting doubt on the propriety of those cases." Berkheimer, 881 F.3d at 1368. Specifically, patent eligibility can be determined at the Rule 12(b)(6) stage "only when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law." Aatrix, 882 F.3d at 1125. And indeed, following Berkheimer and Aatrix, the Federal Circuit has itself affirmed numerous Section 101 rulings that were made at the dismissal or pleadings stage. See, e.g., Burnett v. Panasonic Corp., Interval Licensing LLC v. AOL, Inc., SAP America, Inc. v. InvestPic, LLC and Voter Verified, Inc. v. Election Sys. & Software LLC). Further, the recent decisions highlighted below illustrate that district courts remain willing to invalidate patents under Section 101 at the motion to dismiss stage. Finally, it is worth noting that Senators Chris Coons and Thom Tillis held a roundtable on December 12, 2018, inviting dozens of companies, industry groups, and patent law experts to discuss potential legislative reform of Section 101, which could redefine the contours of patent eligibility.

Below is a summary of recent district court decisions granting Rule 12(b)(6) motions to dismiss under Section 101.

  • Finnavations LLC v. Payoneer, Inc., No. 1:18-cv-00444, 2018 U.S. Dist. LEXIS 199386 (D. Del. Nov. 26, 2018): The court found that the asserted claims of the plaintiff's electronic financial recordkeeping patent are directed to an abstract idea, rendering them patent ineligible. "Humans have kept accounting records for about 7000 years. The [patent in suit] attempts to capture part of this practice in the area of electronic financial recordkeeping through the use of a generic computer." Applying the two-step Alice/Mayo framework, the court found under step one that the asserted claims describe the concept of "bookkeeping"—a "fundamental economic practice"—and "amount to no more than the abstract idea of using a generic computer to search, analyze, and store information," which is patent ineligible. "The [patent] does not address a problem unique to computer technology. Nor does it announce an improvement in computer operation." Further, under step two, the court found that the asserted claims "recite performing an abstract idea using conventional computer functions: running a program, searching information, copying information, translating information, and transmitting information. These steps are 'basic functions of a computer' and fail to transform the claims into patent eligible subject matter." Thus, the court granted the defendants' Rule 12(b)(6) motion to dismiss under Section 101.
  • Tangelo IP, LLC v. Tupperware Brands Corporation, No. 1:18-cv-00692, 2018 U.S. Dist. LEXIS 199138 (D. Del. Nov. 26, 2018: Under Alice step one, the court found that the asserted claims of the plaintiff's advertising patent "are directed to the abstract idea of using an identifier to allow a reader of a printed publication to access related information not in the printed publication—the same concept long practiced by systems of sales representatives and printed product catalogs." Specifically, the court found that the asserted claims "are directed to improving usability of a physical publication page, not a graphical user interface," and thus, the asserted claims "are not directed to improvements in computer functionality." Under Alice step two, the court found that the asserted claims lacked an inventive concept. "Claim 1 merely applies the abstract idea of using a catalog identifier to obtain additional product information in a generic computer environment. Rather than receiving information orally from a sales representative, a user can now receive information visually on the computer. The claim limitations are elements inherent to using a generic computer." Thus, the court granted the defendants' Rule 12(b)(6) motion to dismiss under Section 101.
  • Epic IP LLC v. Backblaze, Inc., No. 1:18-cv-00141, 2018 U.S. Dist. LEXIS 199148 (D. Del. Nov. 26, 2018): Under the first step of the Alice framework, the court found that the asserted claims of the plaintiff's internet chat session patent are directed to abstract ideas. "First, the claims are directed to a method of organizing human activity. Second, the claims do not recite an improvement in computer technology. Third, the claims are functional in nature; they recite what the objective of the invention is, but not how that objective is to be accomplished." Specifically, the court found that the asserted claims "are directed to the idea of a 'chat session' for users of the Internet" where "the idea underlying the claims is to provide an Internet user the ability to visit a website and then form a group from among those visiting the website to conduct a 'chat' independent of the website." "The novelty, according to [plaintiff], is that the invention provides for individuals who are visiting the same website to initiate private chats with one another, separate from the website that the individuals initially visited. The problem, however, is that the idea of a chat session separate from the original website is not an invention; it is a disembodied concept. The asserted claims . . . recite the concept, but not the way to implement it." Under the second step of the Alice framework, the court found that "the asserted claims do not require any non-conventional computer or network, or even a non-conventional and non-generic arrangement of known, conventional pieces. Rather, the claims merely call for the initiation of a chat session that is separate from any previously established chat room, by use of a set of generic computer components and display devices. Thus, . . . the asserted claims in this case do not recite an inventive concept." Finally, the court specifically addressed the appropriateness of resolving the case on a motion to dismiss in light of Berkheimer and Aatrix and concluded that "there are no factual issues that would preclude entry of judgment under Rule 12(b)(6) and no claim construction issues that would require the Court to await claim construction before determining whether the plaintiff’s claims are patent-eligible." "Because Epic has not suggested that there is a factual issue as to whether the asserted claims are directed to something significantly more than the abstract idea itself, Epic has failed to point to a discrete factual issue on which the presence of an 'inventive concept' in claim 19 would turn." As to claim construction, "The claims are straightforward and not technical in nature, and plaintiff’s counsel has not pointed to any terms from the asserted claims that would likely give rise to a material dispute over claim construction." Thus, the court granted the defendants' Rule 12(b)(6) motion to dismiss under Section 101.
  • Coqui Technologies, LLC v. Gyft, Inc., No. 17-777, 2018 U.S. Dist. LEXIS 196169 (D. Del. Nov. 16, 2018): Under the first step of the Alice framework, the court found that the asserted claims of the plaintiff's electronic gift certificate patent are "directed to the abstract idea of selling, gifting, and using electronic gift certificates over a network, which is a longstanding commercial practice. . . . The claims of the [patent in suit] do not improve the functioning of a computer or any of the other components involved in the method. Instead, the asserted claims add conventional computer components to well-known business practices." Under the second step of the Alice framework, the court found that the asserted claims "implement the longstanding commercial practice of selling, gifting, and using gift certificates by using a generic computer and networking components in conventional ways." Specifically, the court found that the components in the asserted claims "operate in their typical capacities in conventional ways and do not embody an inventive concept. The [patent in suit] does not specify precise devices that must be used in the method or provide any explanation about how the software solves a technological problem." Further, the patent in suit "does not describe the order or combination of generic components in a non-generic arrangement, nor does it describe how the configuration of components is necessary to make the claimed method innovative. . . . The application of barcodes, MMS messages, and devices with Internet access to a system comprising generic computing components for circulating electronic gift certificates is not an inventive concept. . . . The idea that the [patent in suit] improves the electronic gift certificate process by facilitating the purchase, usage, and gifting of certificates without requiring the customer to be physically present in the store is not an inventive concept. The claims at issue here do not solve a technological problem. Instead, the claims provide a conventional technological environment (i.e. computers and the Internet) in which to carry out the abstract idea of using electronic gift certificates." Thus, the court found that the asserted claims lacked an inventive concept, and the magistrate judge recommended that the court grant the defendants' Rule 12(b)(6) motion to dismiss under Section 101.
  • Valmont Industries Inc. v. Lindsay Corporation, No. 1:15-cv-00042, 2018 U.S. Dist. LEXIS 193867 (D. Del. Nov. 14, 2018): As a threshold matter, the court considered Berkheimer and Aatrix and "determined that no disputes of fact make resolution of the issues presented by the motion inappropriate" and noted that "both parties now agree that claim construction does not bear on the motion to dismiss." Next, under the first step of the Alice framework, the court found that the claims at issue of the plaintiff's irrigation system patent are directed to the abstract idea "of remotely monitoring and controlling irrigation equipment." "Plaintiff describes how the invention allows computers to perform the same functions as in the prior art, but on a smaller screen. This data-reformatting, even if captured in the claims, is an abstract idea. . . . [A]pplying irrigation data to an 'interactive interface limitation [remains] a generic computer element.'" Moving on to Alice step two, the court found that "The patent functions conventionally, achieving portability over the prior art through the application of a standard computer telecommunication system, processor, and display." "Plaintiff argues that its SAC (as well as the specification) demonstrates that the patent is 'directed to specific implementations of the claimed invention that are particular for use in remote devices and their monitoring and controlling of irrigation equipment.' . . . This characterization finds no basis in the patent and cannot, therefore, render the claims patent eligible." Thus, the court granted the defendants' Rule 12(b)(6) motion to dismiss the claims at issue under Section 101.
  • Secure Cam, LLC v. Tend Insights, Inc., No. 5:18-cv-02750, 2018 U.S. Dist. LEXIS 194499 (N.D. Cal. Nov. 14, 2018): The court first identified a representative claim of the plaintiff's digital image categorizing patent for the Section 101 analysis. Next, under the first step of the Alice analysis, the court found that the claims at issue are "directed to the abstract idea of analyzing and automatically categorizing digital images. . . . [T]he Patents-in-Suit describe physical components such as a digital camera, but the physical components 'merely provide a generic environment in which to carry out the abstract idea.' . . . Contrary to Plaintiff’s assertions, the claims at issue do not describe a specific improvement to digital camera functionality. Rather the claims at issue describe 'conventional or generic technology in a nascent but well-known environment." Under the second step of the Alice analysis, the court found that the claims at issue lack an inventive concept because they "recite only generic, conventional computer components such as a processor and memory. Nothing in the claims calls for any specific kind of computer architecture, component or data structure." Further, "[t]he analysis module also fails to provide an inventive concept because it is simply a generic component that analyzes and categorizes digital images. . . . The claimed analysis module in the patents-in-Suit is simply a substitute for the human effort it would take to analyze and categorize images." Thus, the court granted the defendants' Rule 12(b)(6) motion to dismiss under Section 101.

Originally published by IPWatchdog

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions