District Court Grants Judgment Of Patent Invalidity On The Pleadings, Finding Insufficient Allegations Of Validity In Complaint
On March 27, 2018, Judge Leonard P. Stark of the United States District Court for the District of Delaware granted a motion to dismiss, finding the subject matter of plaintiff’s patent claims to be unpatentable pursuant to the abstract-idea exception to 35 U.S.C. § 101. Triplay, Inc. v. WhatsApp, Inc., No. 13-1703 (D. Del. Mar. 27, 2018). The Court based its ruling on, among other things, the lack of allegations relating to patentability in the complaint, explicitly declining to convert the motion from one for judgment on the pleadings into one for summary judgment.
Plaintiff Triplay asserted various claims of two patents against WhatsApp. The claims all relate to cross-platform messaging techniques. WhatsApp moved to dismiss for failure to state a claim based on its unpatentable-subject-matter defense, a magistrate judge recommended the motion be denied, and, in the instant opinion, the district judge overruled the magistrate and dismissed the complaint.
In this context, there is a two-step test to determine whether a patent claim is unpatentable because it claims an abstract idea, which is unpatentable subject matter. The first step is to check whether the claim as a whole is directed to an abstract idea. The second step, the one at issue here, is to check whether the claims include an “inventive concept,” that is, whether they describe something other than “well-understood, routine, conventional activities.”
In this case, the magistrate judge recommended denying WhatsApp’s motion because of fact issues arising in the second step. “Specifically, the Report found fact issues as to (1) whether the claims solve the problem of cross-platform messaging in a sufficiently particular, non-routine, unconventional way . . . .” The district court followed an interesting path to its conclusion to the contrary.
First, the district court examined the claims themselves, and the patent’s specifications, looking for evidence that the claims included unconventional technology, and found none. Then the district court looked at the complaint to see whether there was any specific pleading of unconventionality, and, finding none, ruled the claims unpatentable and dismissed the complaint. The district court explicitly ruled that “waiting until summary judgment to assess the patentability of the claims at issue here is unnecessary,” reasoning that “the Court would not then be permitted to rely on extrinsic evidence to contradict the indisputable statements of the specification.”
This path is interesting because it made the validity of Triplay’s patents into a question of sufficient pleading, and appears to have put the burden on Triplay to show patentability in its pleadings, despite the presumption of validity attached to an issued patent. Moreover, the district court’s exclusive focus on the “intrinsic evidence” of the patent itself appears to represent a new evolution in section 101 analysis. It would seem instinctive that extrinsic evidence of what was and was not conventional when the patent application was filed would be probative in the step two analysis, but the district court implicitly rejected all such evidence when it declined to convert the motion into one for summary judgment and instead based its invalidity ruling exclusively on the content of the patents and the pleadings.
The district court’s decision will likely be appealed, giving the Court of Appeals for the Federal Circuit an opportunity to weigh in on the relevance or irrelevance of extrinsic evidence in patentable-subject-matter analyses, and on whether it is consistent with the presumption of validity to require a patent owner to plead facts to support a finding of patentability. In the meantime, practitioners representing patent owners would be well advised to plead the unconventionality of their clients’ claimed inventions, in as much detail as possible, rather than relying on the legal presumption of validity.