Over the past few years, it has been common to see inconsistent approaches and analysis for 35 U.S.C. § 101 challenges, particularly those at the pleading stage.  Aatrix, Berkheimer, and subsequent decisions appear to have only led to more inconsistent approaches among district court judges, revealing the glaring flaws of 101 analysis, particularly without more Federal Circuit or Supreme Court guidance.

Last week, Judge Connolly in Delaware denied a 101 motion to dismiss at the pleading stage in Sound View Innovations, LLC v. Delta Air Lines, Inc.^[1]  In his opinion, Judge Connolly did not address whether the claims were abstract, but instead focused on whether the claim limitations involve more than performance of well-understood, routine, and conventional activities, citing to Berkheimer.  For each of the three patents, Judge Connolly stopped short his analysis based upon each patent including a statement that the alleged invention was not conventional at the time.

The decision stated:

I need not and do not decide whether the asserted patents are directed to abstract ideas because statements in the specifications of the asserted patents that are alleged or incorporated by reference in the complaints plausibly establish that the asserted claims contain an inventive concept.

If such an approach is adopted, it is likely that no 101 motion to dismiss at the pleading stage would ever survive, as every patent alleges that its invention is novel, and any plaintiff can include boilerplate statements in a complaint that the specific arrangement included in claims was not conventional or well-known.

Perhaps even more problematic is that the specific patents subject to the motion admitted that the features in the claim limitations were already known in the art.  Such an admission should support, not negate, a 101 motion regarding the claims in question.

Rulings such as the Sound View decision will only encourage prosecuting attorneys to include meaningless self-serving statements in every specification that the specific combination was not well-known or conventional, and invite plaintiffs to do the same in complaints to evade an early 101 determination.

While the Federal Circuit remains fractured on how to deal with 101 challenges, it has blessed the granting of 101 motions at the pleading stage in certain circumstances.  The Sound View decision suggests that these circumstances are very limited, and perhaps non-existent.

FOOTNOTES

[1] Sound View Innovations, LLC v. Delta Air Lines, Inc., No. CV 19-659-CFC, 2020 WL 1667239 (D. Del. Apr. 3, 2020).