While acknowledging that claim construction does not necessarily preclude granting a Rule 12(b)(6) motion to dismiss based on statutory subject matter eligibility, a U.S. District Court found the specific claims at issue were not amenable to a legal determination of patent ineligibility because “every possible plausible construction of each of the forty-nine claims asserted therein” had not been shown. The decision highlights one pitfall to seeking invalidation of an asserted patent on a Rule 12(b)(6) motion – and, conversely, one possible defense for such motions.
In concurrent October 8, 2015 opinions in 15-cv-00156-RP, A Pty Ltd. v. Facebook, Inc., 15-cv-00157-RP, A Pty Ltd. v. Google, Inc., and 15-cv-00158-RP, A Pty Ltd. v. Homeaway, Inc., Austin-based Judge Robert Pitman of the Western District of Texas addressed a split within district courts on deciding subject matter eligibility for computer-implemented inventions prior to claim construction. The Court noted two Federal Circuit decisions that found “no flaw” in determining validity under 35 U.S.C. § 101 without an express claim construction:
[C]laim construction is not necessarily required to resolve a motion based on Section 101 eligibility.
Claim construction is unnecessary, the Court explained, when either the claims are “straightforward,” with no limitations so “opaque . . . that claim construction would be necessary to flush out [the claims’] contours,” or “the basic character” of the claimed subject matter is clear.
By contrast, claim construction disputes involving claims amenable to a construction reading on patent eligible subject matter may preclude disposition via a motion to dismiss (citations omitted):
It is a “bedrock principle” of patent law that an invention is defined by claims of the patent. Thus, ordinarily, it is “desirable-and often necessary-to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.” . . . .
Other courts have declined to dismiss prior to claim construction if it is possible to read the claims as stated to cover patent-eligible subject matter, or if the parties dispute key terms of a patent.
The decisions highlight the need for careful claim analysis in connection with both making and defending a Rule 12(b)(6) motion to dismiss for lack of statutory subject matter eligibility.