Certusview Technologies, LLC v. S & N Locating Services, LLC
2:13-cv-00346
E.D. Va.Aug 10, 2016Background
- CertusView sued S&N for patent infringement asserting five related patents (including U.S. Patent No. 8,340,359) covering e‑Sketch technology to document underground locate operations. The only asserted claim from the '359 patent was Claim 1 (a method for generating a searchable electronic record of a locate operation).
- After Markman and claim limitation of asserted claims, S&N moved under Rule 12(c) for judgment on the pleadings that the asserted claims were invalid under 35 U.S.C. § 101. The court granted that motion (Jan. 21, 2015), finding all asserted claims patent‑ineligible, including Claim 1 of the '359 patent.
- CertusView then tried an inequitable‑conduct declaratory judgment counterclaim at a bench trial (March 2016). After trial, CertusView moved under Rule 54(b) for partial reconsideration of the court’s § 101 ruling as to Claim 1, relying on (1) the Federal Circuit’s decision in Enfish v. Microsoft and (2) evidence developed at the bench trial.
- The court reviewed whether (a) Enfish constitutes controlling contrary law warranting reconsideration and (b) the bench‑trial evidence was “substantially different” from the evidence available at the 12(c) stage.
- The court denied reconsideration: it found Enfish did not constitute a contrary decision of law that required reversal and, on the merits, Enfish did not change the outcome because Claim 1 was directed to the abstract idea of creating/storing a computer‑readable file of information (applied to locate operations) rather than a specific improvement in computer functionality; trial evidence was not newly dispositive or substantially different for the § 101 determination.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Enfish is controlling authority requiring reconsideration of the court’s § 101 ruling | Enfish changes step‑one analysis: claims that improve a technological process or computer functionality ("specific implementation") are not abstract and Enfish therefore requires reconsideration | Enfish does not create contrary controlling law; even applying Enfish Claim 1 still claims an abstract idea and Enfish does not compel a different result | Denied: Enfish clarifies step one (focus on improvements to computer functionality) but is not a contrary decision forcing reversal; Claim 1 remains directed to an abstract idea under Enfish analysis |
| Whether new bench‑trial evidence constitutes substantially different evidence warranting reconsideration under Rule 54(b) | Trial evidence shows e‑Sketch provides concrete improvements over prior art and that paper manifests lack geo‑coordinates, supporting patent eligibility | Trial evidence is irrelevant to a 12(c) § 101 ruling that rests on the patent claims and specification; no case shows trial evidence alone justifies reversing a § 101 12(c) decision | Denied: trial evidence was not substantially different or dispositive for the § 101 legal analysis the court decided on the pleadings |
| Whether Claim 1 of the '359 Patent is directed to a non‑abstract improvement to computer functionality (Enfish step‑one focus) | Claim 1 improves recordkeeping/verification for locate operations and thus should be viewed as a technological improvement | Claim 1 merely collects, annotates, and stores information using generic computer functions; it does not claim a specific improvement in computer technology | Held: Claim 1 is directed to the abstract idea of creating/storing a computer‑readable file applied to a locate operation, not a specific improvement to computer functionality |
| Whether Claim 1 contains an "inventive concept" under Alice step two | The combination of aerial imagery, digital markups, geo‑points, timestamps, technician/company fields, and ticket numbers yields an inventive concept | The components are generic and routine computer activity; their combination does not transform the abstract idea into patent‑eligible subject matter | Held: Claim 1 lacks an inventive concept sufficient to transform the abstract idea into patent‑eligible subject matter; remains invalid under § 101 |
Key Cases Cited
- Enfish v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (clarifies § 101 step‑one: claims directed to a specific improvement in computer functionality are not necessarily abstract)
- Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) (establishes two‑step framework for § 101 analysis and rejects patenting abstract ideas)
- Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (2012) (explains inventive‑concept inquiry at step two of § 101 analysis)
- Diamond v. Diehr, 450 U.S. 175 (1981) (holds novelty is distinct from § 101 eligibility; cautions against collapsing novelty into eligibility)
- Bilski v. Kappos, 561 U.S. 593 (2010) (addresses limits of patenting methods of organizing human activity and abstract ideas)
- Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (rejects that adding conventional computer components to an abstract idea imparts patent eligibility)