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District Court finds motion to dismiss under Alice premature absent consideration of “every possible plausible construction” of claims.

Posted on October 28, 2015

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.