Judge: Leonard Davis
Holding: Motion to Dismiss for Failure to Allege Infringement of a Patentable Claim Under 101 GRANTED
The patent in suit deals with a method for processing floating-point numbers, and Plaintiff Uniloc asserted one claim from the patent in its case against Defendant Rackspace. Rackspace, for its part, alleged that the invention was not patentable subject matter, and sought dismissal on that basis.
“When the allegation in a complaint, however true, could not raise an entitlement to relief," Judge Davis wrote, quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 558 (2007) and Wright & Miller, "this basic deficiency should . . . be exposed at the point of minimum expenditure of time and money by the parties and the court.” The Court further noted that Section 101 questions of patentability may be resolved before claim construction, and that invalidity under section 101 is a question of law. In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008).
Defendants argued that Claim 1 is unpatentable subject matter because it fails the Federal Circuit’s “machine-or-transformation” test and violates the Supreme Court’s bright-line prohibition against patenting mathematical formulas and abstract ideas. “Although Uniloc originally questioned the timing of Defendants’ section 101 validity arguments,” Judge Davis noted, “Uniloc agrees to resolution of this issue on the merits at this stage to advance the litigation.”
Judge Davis concluded that the asserted claim did not “recite a machine” (a lovely phrase for steampunk buffs) nor did it meet the transformation prong of the test. While this alone did not render it patent-ineligible, he found that it was a mathematical formula that is unpatentable under section 101, and that its identity as a mere improvement to a mathematical formula “would cover vast end uses, impeding the onward march of science” to borrow a phrase from the Supreme Court in Benson (again, I’m seeing steampunk imagery here, or at least a perturbed H.G. Wells) and thus under Flook was not an exception to the otherwise unpatentable subject matter.