101 Gaining Importance in Local Patent Rule Submissions After Alice

A recent district court decision has held that patent eligibility arguments not raised in invalidity contentions served pursuant to local patent rules are waived. In Good Technology Corporation v. MobileIron, Inc., No. 5:12-cv-5826, the United States District Court for the Northern District of California denied Defendant MobileIron, Inc.’s motion for judgment on the pleadings based on patent eligibility arguments that were not disclosed in either original or amended invalidity contentions.

The United States Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) has encouraged parties to challenge patent claims purporting to claim abstract ideas under 35 U.S.C. §101. Under Section 101, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent[.]” Alice emphasizes that §101 is subject to “‘an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.’” As summarized in a prior Gibbons IP Law Alert, a court applying Alice evaluates whether the claims at issue are directed to one of those patent-ineligible concepts and, if so, whether additional elements transform the nature of the claim into patent-eligible subject matter.

In MobileIron, the defendant argued in a motion under F.R.C.P. 12(c) that two asserted patents were ineligible for patent protection under Section 101 as applied in Alice, but did not raise Section 101 challenges to either patent in its Local Patent Rule 3.3(d) invalidity contentions. Although it appears that Alice was decided after the deadline for service of invalidity contentions in the case, the defendant did not move to amend its contentions after Alice issued to raise the arguments now being raised in its Rule 12(c) motion.

The district court was not persuaded to view patent eligibility like jurisdiction, which can be challenged at any time. The court noted that unlike jurisdiction – patent eligibility is a creature of statute and does not invoke the court’s authority under Article III of the Constitution. The court further reasoned that its local patent rules were designed to provide early notice of infringement and invalidity arguments, and directed litigants seeking amendment to do so with diligence.

The lesson here is that judges in local patent rule jurisdictions – including the United States District Court for the District of New Jersey – may prefer to see Section 101 ineligibility arguments in original or amended invalidity contentions served pursuant to the local patent rules, instead of other procedural vehicles.

Wendy R. Stein is Counsel in the Gibbons Intellectual Property Department. Calvin K. May, an Associate in the Gibbons Business & Commercial Litigation Department, co-authored this post.