101 Frustrations

Jason Bourgeois

IP Portfolio Manager

Contact: jason@ipval.com

On April 25th in Avago Technologies General IP (Singapore) Pte. Ltd. v. ASUSTeK Computer, Inc. (3-15-cv-04525)  the Court denied the defendant’s 101 motion to dismiss. The motion was heard by Judge Chen in the District Court for the Northern District of California and sought to dismiss the case on the grounds that plaintiff’s MPEG decoder patent encompassed unpatentable subject matter because the asserted claims were directed to an abstract idea.

The Court seemed to express frustration at the current 101 regime stating: “[T]he [Alice] step one inquiry may be a complicated matter if only because it is not clear what abstract means in the first place.” This is a frustration shared by many who own patents granted prior to Alice/Mayo and are now unable to accurately predict the validity of their property rights. Post-Alice jurisprudence is a minefield both for District Courts and patent owners. The Court went on to lament the fact that “[t]he step one inquiry is further complicated by the fact that it is not always easy to say what a patent claim is ‘directed to.’ Patents cover a broad and complex range of technologies, a one size-fits-all regime is not feasible. Further, an inventor is not expected to predict the ever changing landscape of technology at the time of patenting. If a broader interpretation of a claim reads on another’s method or manufacture, should the patent be invalidated just because it can be interpreted to cover a wider range than originally intended? The Court echoed this sentiment by stating: “the fundamental concept or purpose of a claim can be expressed at varying levels of generality or specificity, which could then impact whether it is directed to an abstract idea (i.e., the more general the purpose, the more likely to be abstract).”

Turning to the claims at issue, the Court characterized their purpose as “decompress[ing] digital video using a single memory… Given this purpose, the Court is satisfied that there is no genuine risk of preempting future research and development – i.e., [plaintiff] is not simply claiming an abstract idea in the attempt to lay claim to a building block of future research and development; the invention has specific configuration, not a broad abstract idea” The Court then concluded that “[b]ecause [defendant] has failed to establish that the claims at issue are directed to a patent-ineligible concept, i.e., an abstract idea, the Court need not address step two of Alice which embodies the inventive concept test.”

While the holding is notable in that it goes against the grain of Post-Alice/Mayo 101 jurisprudence, the frustration of the judge forced to rule based on a seemingly arbitrary distinction is more important. Rights are being dissolved because judges do not have a workable precedent to apply. This is a situation that deserves remedying.

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