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Northern District of Texas: Even Post-Berkheimer, Patent Claims Continue to be Ineligible for Patenting as a Matter of Law When They Are Not Drawn to Particular Technical Solutions or Advances Described in the Specification
Whether there are underlying material disputes of fact relevant to patent subject matter eligibility, and (if so) when, how, and by whom those disputes should be resolved, have been the topic of much discussion since the Federal Circuit's Feb. 8, 2018 decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). In Berkheimer, the Federal Circuit ruled that although the ultimate determination of eligibility under 35 U.S.C. §101 is a question of law, that determination may nonetheless encompass underlying factual disputes that must be proven by clear and convincing evidence, such as "whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field" under Step Two of the Supreme Court's Alice test. See, id. at 1368; see also, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354-55 (2014).
Chief District Judge Barbara Lynn of the United States District Court for the Northern District of Texas recently issued a decision shedding light on how these questions may be resolved in the post-Berkheimer world. In iLife Techs., Inc. v. Nintendo of Am., Inc., defendant Nintendo moved for summary judgment that the disputed patent was directed to subject matter ineligible for patenting. See, No. 3:13-cv-4987-M, Dkt. Nos. 223-25. The district court carried the motion (id., Dkt. Nos. 302, 304), and the case proceeded to a six-day jury trial in August 2017. Id., Dkt. Nos. 326, 331, 332, 337, 338, 339. At trial, the Section 101 issues were not submitted to the jury, which returned a verdict of infringement and awarded damages of $10,100,000. Id., Dkt. No. 342.
In post-trial briefing, Nintendo renewed its challenge to subject matter eligibility. Id., Dkt. Nos. 356-58. On Jan. 17, 2020, Judge Lynn entered judgment as a matter of law that the disputed patent was directed to an abstract idea ineligible for patenting under Section 101. See, iLife Techs., Inc. v. Nintendo of Am., Inc., No. 3:13-cv-4987-M, 2020 U.S. Dist. LEXIS 10018 (N.D. Tex. Jan. 17, 2020). More specifically, under Step One of Alice, the district court analyzed the language of disputed claim 1 and the specification of the patent, and concluded that the claim is "directed to the abstract idea of 'gathering, processing, and transmitting … information.'" Id. at 5-10 (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)). Under Step Two of Alice, the district court again analyzed the claim language and specification, and concluded that "claim 1 encompasses a sensor that senses data, a processor that processes data, and a communications device that communicates data, and no further inventive concept is recited to transform the abstract idea into a patent-eligible invention." Id. at 10-12.
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