IP Portfolio Manager
On May 6th in the U.S. District Court for the District of Delaware, Judge Robinson denied AOL’s motion to certify for interlocutory appeal the Court’s previous order denying AOL’s 101 motion to dismiss for lack of patentable subject matter. (Improved Search LLC v. AOL Inc., 1-15-cv-00262; view the patent in suit U.S. 6,604,101) The Court cited the current popularity of § 101 motions in its reasoning for denying the motion.
Citing a New Jersey District Court ruling, the Court noted that “[c]ertification is not meant to provide early review of difficult rulings in hard cases.” The Court exercised its discretion to deny certification despite the controlling question of law that would advance the litigation because “[g]iven the current popularity of such motions, the certification of each denied motion would surely cause more harm than good and would certainly result in piecemeal litigation.” The Court pointed to its holding in YYZ v. Pegasystems Inc., (1-13-cv-00581) in noting that even though it “acknowledged the uncertainty in the developing law under § 101” such uncertainty cannot “be the basis for certifying each district court decision on a § 101 motion to the Federal Circuit for review.” (Read our take on YYZ v. Pegasystems).
The original denial of AOL’s motion is a good primer on the current jurisprudence surrounding 35 U.S.C. § 101. In it, the Court notes that the fact that “a method involving a computer and the internet may be broken down into a series of steps performed by a human does not resolve whether such methods is an ‘abstract idea.’ The continuum begins with methods that ‘merely recited the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet’ and progresses towards methods where ‘the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.'” (Citing DDR). Disposing with the first Alice inquiry, the Court found that the ‘101 patent does not practice a pre-Internet business method on a computer but rather addresses a problem fundamentally rooted in computer technology by retrieving web pages written both in the query language as well as those written in foreign languages.
Addressing the second Alice inquiry, the Court concluded that the ‘101 patent passes the test because “[a]s in DDR, the ‘claims at issue here specify how interactions with the Internet are manipulated to yield a desired result.'” Therefore, the solution provided by the patent at issue is not a “routine and conventional” use of computer and internet technology.
So, in summation, DDR is still good law, certification of a denied 35 U.S.C. § 101 motion would cause more harm than good, and defendants have overused § 101 and District Court judges are taking notice. One hopes that this restraint will push the Federal Circuit to curtail the Alice regime and its current murky, overbroad interpretation of 35 U.S.C. § 101.