Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. A recent set of Section 101/Alice rulings out of the Central District of California (Kajeet v. Qustodio and the Skyhawke/DECA cases in particular) suggests that C.D. CAL may be taking a much more cautious approach to 101/Alice issues raised in a motion to dismiss. Likely in response to the Berkheimer and Aatrix cases out of the Federal Circuit, several very experienced district judges in the C.D. CAL patent pilot program (J. Kronstadt and J. Wu) have raised concerns about prematurely granting 101/Alice motions. The judges seem to be of the position that a patent owner should be permitted ample opportunity to allege in a pleading whether the patented technology goes beyond well-known, conventional, routine activities. This is an interesting position inasmuch as the patent(s)-in-suit would typically either be attached to the complaint, or attached to a motion. In addition, any comments regarding the patented technology going beyond well-known, conventional, routine activities would presumably be addressed in the motion papers. Thus, it is unclear what additional content would need to be pled by way of an amended complaint that would not be in the complaint, in the patent, and in the motion papers. That said, granting 101/Alice motions has been commonplace, and perhaps, after the Berkheimer and Aatrix cases, these highly experienced patent judges believe that this issue should be addressed on a more substantial record. In light of these rulings, it is possible that more software and NPE patent cases may be filed in C.D. CAL.
2. The Federal Circuit issued a summary affirmance (i.e., affirmance without opinion) of a district court’s invalidation of four (4) patents directed to electronic slot machine technology, finding that the patents were directed to abstract ideas under the Section 101/Alice framework for analyzing subject matter eligibility. The district court opinion, which is quite detailed, and seems to follow Federal Circuit precedent, is here. Thus, Alice invalidations are still going strong at the Federal Circuit.
3. On the other hand, in a composition of matter/method of treatment case, the Federal Circuit, in Natural Alternatives v. Creative Compounds, reversed a district court’s invalidation of patent claims directed to a dietary supplement containing beta-alanine, an amino acid that when combined with histidine, it can form dipeptides that allegedly may have certain beneficial effects in anaerobic muscle work. The district court invalidated the patent claims on a Rule 12 motion. The Federal Circuit, however, found the claims valid, pointing out that: (1) “Administering certain quantities of beta-alanine to a human subject alters that subject’s natural state. Specifically, homeostasis is overcome, and the subject’s body will produce greater levels of creatine. … This, in turn, results in specific physiological benefits for athletes engaged in certain intensive exercise. … The claims not only embody this discovery, they require that an infringer actually administer the dosage form claimed in the manner claimed, altering the athlete’s physiology to provide the described benefits. These are treatment claims and as such they are patent eligible;” (2) “Just as the Method Claims are directed to specific methods of treatment that employ a natural law, the Product Claims are directed to specific treatment formulations that incorporate natural products, but they have different characteristics and can be used in a manner that beta-ala-nine as it appears in nature cannot;” and, (3) “As the Supreme Court has warned, we must be careful not to overly abstract claims when performing the Alice analysis.” The opinion is here. Thus, there appears to be some recognition at the Federal Circuit that courts must be careful with their 101/Alice analyses, lest Alice swallow up all of patentable subject matter.