Former law professor Ryan Holte is now Judge Ryan Holte, appointed by Donald Trump and sitting on the United States Court of Federal Claims (15 year term). Welcome to the bench Judge Holte. The Court of Federal Claims handles money-demands against the U.S. Government — including allegations that the U.S. Gov’t has infringed privately owned patents.
One of Holte’s first substantive patent decisions comes in Wanker v. U.S., 18-1660, 2020 WL 521896, at *1 (Fed. Cl. Jan. 31, 2020). The plaintiff, William Wanker, PhD. accused the U.S. Gov’t of infringing four of his patents: U.S. patents: 7,302,429; 8,126,779; 8,204,797; and 9,595,041. All four asserted patents relate to “ranking products” using computers and the internet and the accused infringing activity is use of the Gov’t’s Past Performance Information Retrieval System (“PPIRS”).
The U.S. Gov’t filed its motion to dismiss — arguing that the patents are all invalid as a matter of law under Section 101. Judge Holte has denied the motion — holding that the complaint included sufficient “concrete, factual allegations as to why the claimed combination of elements was not well-understood, routine, or conventional.” In walking through the complaint, Judge Holte disregarded some of the pleadings as mere conclusory statements of law. For instance, the complaint alleged that the invention is a “significant technological improvement . . . not well understood, routine, or conventional activity at the time of the invention.” However, the complaint also added more specific and detailed allegations to help the claims survive the motion to dismiss. Notably, the court cited these lines from the complaint:
57. In looking to solve this problem of comparing different products and multiple categories of information about each product, Mr. Wanker invented systems and methods to define, prior to data analysis, consumer-modifiable weighting factors for different categories of merchant and product information, collect the required information from each merchant or data source, calculate product ranks, and present the ranked list to the consumer. . . .
59. Persons of skill in the art would recognize that the claimed consumer-definable, multi-category comparison information reduces processing time and increases processor efficiency.
60. Those of ordinary skill in the art in 1999 understood that conventional online shopping systems could not deliver consumer-defined product or service ranking for different products from different vendors based on anything other than a simple price comparison which is unlike the inventions described, enabled, and claimed in the Asserted Patents.
61. The technical solutions of the Asserted Patents eliminate the need for consumers of products and/or services to make purchasing (or contract award) decisions based on price alone.
According to the Court, these factual pleadings are sufficient to raise a factual dispute regarding whether the invention was “well-understood, routine, or conventional” and – as such – precludes a judgment of invalidity as a matter of law on the pleadings. The case will now move on through the pleadings — perhaps to be resolved on summary judgment.
The allegations made by the patentee here are specific to his inventions, but any patentee could make parallel allegations in their complaints. As such, this decision appears to provide something of a roadmap for patentees in drafting a complaint sufficient to avoid 12(b)(6). I’ll note that I still find it strange that the complaint was required to provide allegations sufficient to preemptively overcome an affirmative defense of invalidity — but Judge Holte is bound by precedent on that point.
As a recent professor, it is not surprising that Judge Holte cites to several of his former colleagues as part of his analysis.
- Paul R. Gugliuzza, The Procedure of Patent Eligibility, 97 Tex. L. Rev. 571, 601 (2019) (“eligibility should be understood to present a question of law based on underlying facts”).
- Timothy R. Holbrook & Mark D. Janis, Patent-Eligible Processes: An Audience Perspective, 17 Vand. J. Ent. & Tech. L. 349, 362–63 (2015) (“[T]he Supreme Court has made it clear that the use of merely conventional steps is not sufficient to create a patent-eligible inventive concept.”).
- Jeffrey A. Lefstin, Peter S. Menell & David O. Taylor, Final Report of the Berkeley Center for Law & Technology Section 101 Workshop: Addressing Patent Eligibility Challenges, 33 Berkeley Tech. L.J. 551, 579 (2018) (most 101 issues are being resolved pre-trial)
- David O. Taylor, Clear But Unconvincing: The Federal Circuit’s Invalidity Standard, 21 Fordham Intell. Prop. Media & Ent. L.J. 293, 312 (2011) (presumption of validity).
- Daniel Harris Brean, Business Methods, Technology, and Discrimination, 2018 Mich. St. L. Rev. 307, 335 (2018) (claim construction is critical to the eligibility analysis).