Intellectual Ventures I LLC v. Erie Indemnity Company
850 F.3d 1315
| Fed. Cir. | 2017Background
- Intellectual Ventures (IV) sued multiple insurers (Erie, Old Republic, Highmark group) alleging infringement of U.S. Patents 6,510,434 (’434), 6,519,581 (’581), and 6,546,002 (’002).
- Defendants moved to dismiss: for lack of standing as to the ’581 patent (Rule 12(b)(1)) and for patent-ineligibility under 35 U.S.C. § 101 as to all three patents (Rule 12(b)(6)).
- The district court found IV lacked title to the ’581 patent because the Alset assignment did not transfer the then-pending continuation that became the ’581 patent, and dismissed IV’s suits on that patent for lack of standing; the court also held all three patents § 101-ineligible and dismissed infringement claims.
- On appeal the Federal Circuit reviewed the standing/contract-interpretation de novo under California law and § 101 issues de novo, addressing three discrete issues: standing and § 101 for the ’581 patent; § 101 for the ’434 patent; § 101 for the ’002 patent.
- The Federal Circuit affirmed dismissal for lack of standing as to the ’581 patent (Alset Agreement did not expressly or reasonably implicitly assign the continuation), vacated the district court’s § 101 ruling on the ’581 patent (because the patentee was not before the court), and affirmed the § 101 dismissals as to the ’434 and ’002 patents as directed to abstract ideas lacking an inventive concept.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing to assert the ’581 patent | IV: Alset Agreement’s general grant ("in and to said patents" and "goodwill…symbolized by said patents") and extrinsic acts (recording, paying fees) show intent to transfer the continuation that became the ’581 patent | Defendants: The Alset Agreement lists specific patents/applications and omits the then-pending ’581 application; general language and goodwill do not convey unlisted continuation | Held: Affirmed dismissal for lack of standing — agreement not reasonably susceptible to IV’s interpretation; no transfer of the ’581 application |
| Patent eligibility of the ’581 patent under § 101 | IV: claims should be adjudicated on the merits | Defendants: claims directed to abstract idea and lack inventive concept | Held: Vacated § 101 judgment as to the ’581 patent and remanded with instruction to dismiss claims based on lack of patentee in the suit (court cannot decide validity against non-patentee party) |
| Patent eligibility of the ’434 patent under § 101 | IV: claims to a specific XML-tagged index and metadata improve database technology (analogous to Enfish) and are not abstract | Defendants: claims are directed to the abstract idea of creating/using an index to search and retrieve data; XML/metadata are conventional | Held: Affirmed § 101 dismissal — claims are directed to an abstract idea (index/search) and recite only conventional computer implementation (no inventive concept) |
| Patent eligibility of the ’002 patent under § 101 | IV: claims to a mobile interface and pointers provide a specific technological solution for accessing remotely stored user data | Defendants: claims merely recite generic mobile interface/pointers to access remote data — abstract and conventional | Held: Affirmed § 101 dismissal — claims directed to remotely accessing user-specific information and lack an inventive concept (generic implementation) |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (Supreme Court) (establishes two-step Alice/Mayo test for abstract ideas and inventive concept)
- Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (Supreme Court) (framework for inventive-concept inquiry)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.) (claims that improve database technology can avoid abstraction at step one)
- In re TLI Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir.) (classifying/storing data held abstract)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Assn., 776 F.3d 1343 (Fed. Cir.) (data collection and processing claims held abstract)
- Bascom Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.) (inventive-concept may arise from a non-conventional ordered combination)
- Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.) (generic computer implementation insufficient to supply inventive concept)
- Bilski v. Kappos, 561 U.S. 593 (Supreme Court) (abstract-idea precedent addressing limits of patentable processes)
- Diamond Coating Techs., LLC v. Hyundai Motor Am., 823 F.3d 615 (Fed. Cir.) (standing/jurisdiction principles when non-patentee sues)
- Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., 583 F.3d 832 (Fed. Cir.) (courts should not rule on patent validity when patentee is not a party)