234 F. Supp. 3d 331
D. Mass.2017Background
- Egenera sued Cisco for infringement of three patents (U.S. Pat. Nos. 6,971,044; 7,178,059; 7,231,430) covering an enterprise computing platform that can deploy virtual processing area networks (PANs), map virtual storage, and perform failover using virtual MAC addresses.
- The ’044 and ’430 patents (related applications filed Jan. 4, 2002) describe a physical platform of processing nodes, switch fabrics, and control nodes that, under software commands, configure virtual LAN topologies, map storage, and emulate Ethernet internally.
- The ’059 patent (filed May 7, 2003) claims a disaster-recovery system that stores a specification of a primary site's configuration and issues software commands to a configurable platform at a failover site to instantiate matching PANs.
- Cisco moved to dismiss under 35 U.S.C. § 101, arguing the asserted claims are directed to abstract ideas and lack an inventive concept under Alice/Mayo.
- The court applied the two-step Alice framework, considering whether claims are directed to an abstract idea and, if so, whether claim elements supply an inventive concept transforming the claim into patent-eligible subject matter.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claims of the ’430 and ’044 patents are patent-eligible under §101 | Claims recite a specific computing platform (processor pools, control nodes, configuration logic, Ethernet emulation, virtual MAC failover) that improves computer functionality | Claims merely replace manual cabling/configuration with generic software logic and thus recite an abstract idea implemented on a computer | Denied dismissal as to the ’430 and ’044 — claims found directed to improvements in computer functionality and not merely abstract ideas; factual issues on conventionality remain for later stages |
| Whether claim 10 of the ’059 patent is patent-eligible under §101 | The claim describes a configurable platform and stored specification to automate disaster recovery; this improves deployment | Claim is an abstract idea (using a disaster plan to configure a backup) recited at a high level; functional language provides no concrete implementation | Allowed dismissal as to the ’059 — claim 10 is directed to an abstract idea and lacks an inventive concept because key limitations are functional and do not restrict how the result is accomplished |
| Procedural: Scope of §101 inquiry at motion to dismiss | Egenera: patent claims can be evaluated for eligibility where claim language and specification show an inventive technical solution | Cisco: §101 is a threshold question appropriate on the pleadings where claims are facially abstract | Court performed Alice step analysis at dismissal: declined to dismiss two patents but dismissed one based on the complaint and claim language |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (Sup. Ct.) (articulated two-step test for §101 abstract-idea analysis)
- Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (Sup. Ct.) (limitations on adding routine activity to abstract ideas)
- Diamond v. Chakrabarty, 447 U.S. 303 (Sup. Ct.) (laws of nature, physical phenomena, and abstract ideas are not patentable)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.) (claims improving computer functionality are not inherently abstract)
- McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.) (claims with specific rules that improve computer animation patent-eligible)
- Bascom Global Internet Servs., Inc. v. AT & T Mobility LLC, 827 F.3d 1341 (Fed. Cir.) (inventive concept can be a non-conventional arrangement of conventional components)
- Amdocs (Israel) Ltd. v. Openet Tel., Inc., 841 F.3d 1288 (Fed. Cir.) (overlap between Alice steps; analyze prior cases for abstraction)
- TLI Communications LLC v. AV Automotive, 823 F.3d 607 (Fed. Cir.) (generic computer components cannot save an abstract idea)
- Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir.) (computerized tracking/budgeting held abstract)
- Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir.) (dissociation of a functional limitation from how it is performed renders claim abstract)
- Digitech Image Techs. v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.) (distinguishing mere organization or presentation of information)