Judge Holte: Motion to Dismiss Denied – Pathway for avoiding motions-to-dismiss

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.

  1. 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”).
  2. 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.”).
  3. 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)
  4. 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).
  5. Daniel Harris Brean, Business Methods, Technology, and Discrimination, 2018 Mich. St. L. Rev. 307, 335 (2018) (claim construction is critical to the eligibility analysis).

22 thoughts on “Judge Holte: Motion to Dismiss Denied – Pathway for avoiding motions-to-dismiss

  1. 5

    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.

    “Could not”?

    Last time I checked there were substantial penalties for bald-faced lying to a Federal Court.

    1. 4.1

      Sometimes the jokes write themselves. I’m guessing the plaintiff here has been the deserved target of many such jokes already but is not yet satisfied. Let the laughter continue a bit longer, I guess.

      1. 4.1.1

        the deserved target….

        because of the (Beavis and Malcolm) name…?

        My, his brother Richard must be even more deserving, eh?

  2. 3

    Let’s see the claims, Dennis. Then we can understand whether this was a just result or not.

    1. 3.1

      … because the Ends justify the Means, and Malcolm needs to sniff the claims to verify the Ends.

      1. 3.1.1

        link to lawyersgunsmoneyblog.com

        It’s increasingly clear that both you and Dennis belong to similar clubs (hint: fun at the we-enie parties is the most important consideration) so maybe you both ought to read the linked article and reflect for a bit.

        The mind is a terrible thing to waste but Repuk-k-ke judges are well practiced at wasting everything.

        1. 3.1.1.1

          Maybe if you wanted to – you know – make an actual point….?

          1. 3.1.1.1.1

            My point is that these claims are plainly ineligible g-rbage and a decent judge would have kicked the case out on the pleadings instead of buying the plaintiffs self-serving b.s.

            But this guy is neither a decent judge nor a decent human being for that matter.

            1. 3.1.1.1.1.1

              Your ‘point’ then, has zero to do with me, now does it?

              Unless you feel that entirely random association is “ok” because of your feelings…

              Oh wait, this is Malcolm….

            2. 3.1.1.1.1.2

              Plus, you asked for the claims, and then made your post without noting that you actually had seen the claims.

              Are these claims “evident” from your sensing by way of magic?

            3. 3.1.1.1.1.3

              MM >> “plainly ineligible g-rbage”.

              Are you sure you are a lawyer? It doesn’t seem like it to me. One of the things we have to do in law school is read about why you want laws and not the opinion of the monarch to determine the outcome of cases.

              1. 3.1.1.1.1.3.1

                Malcolm’s glorious ‘one-bucketing’ at work

                The only ‘right’ things are the things in Malcolm’s bucket — everything else is in one other bucket, that Malcolm has anointed himself to be the only arbiter of what goes in which bucket is of course entirely natural (for Malcolm).

              2. 3.1.1.1.1.3.2

                It’s 2020 and if you can’t understand why assigning “scores” to marketed items (notoriously hard to rank — just ask an “expert” in the list-making arts!) is ineligible for patenting then you probably shouldn’t be talking down to actual patent lawyers, or first graders for that matter.

                1. Do you understand the actual law — you know, the one written by Congress — and the subject matter as provided by the claim as a whole, Malcolm?

                  There IS no other way of talking with you (as an actual patent lawyer) other than by talking down.

  3. 2

    Thanks Dennis — do you have a link to / copy of the motion denial?

  4. 1

    I guess you have to put that in so the judge can find a way not to dismiss, but we have all seen many times these same assertions be dismissed and the claims held ineligible because the judge has decided so.

    Face it. There is no law associated with Alice. It is a law that says a judge can fabricate nonsense and invalidate any claim they don’t like.

    1. 1.1

      I agree — in so far as the “lesson learned” here though, one needs at least ‘one rung’ down on a ‘Ladders of Abstraction’ equivalent in pleadings to at least make it past the initial step.

      In other words, in the pleadings, do MORE than merely state that your invention is not just “conventional.”

      Prof. Crouch does ‘tip off’ this move as seemingly backwards with his comment of: “ 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.” — but does not go further in explaining why this ‘backwards-ness’ is present (hint: it’s because the Judicial Branch has — at its own ‘discretion’ — eliminated the statutory presumption of validity).

      A granted patent carries with it that the grant is proper against ALL of the law to which a patent application must be evaluated — including 101 (as has been used by the courts – I am taking for the sake of argument that 101 is such a thing as the courts may provide challenges upon).

      Thus, procedurally, the onus should NOT be on the patent holder, and it is the movant that should have the onus in their 12b6 pleading to do more than state a conclusory assertion of law. Prof. Crouch (rightfully) notes that the 101 assertions have typically been provided at the affirmative defense stage, but given the Supreme Court re-writing of statutory law, we have this ripple effect.

      1. 1.1.1

        See TrackTime v. Amazon (D.Del., Jan. 8, 2020) where a 150-page amended complaint, with a supporting expert declaration, was accepted to overcome an errantly granted motion to dismiss. link to tinyurl.com In Delaware it appears the burden is now on a plaintiff to prove validity. The order accepting the amended complaint was given orally and is one paragraph long.

        Efficient infringer Amazon did delay the litigation by 14 months though, thinking nothing of making arguments directly opposite what they previously argued to the PTO in prosecuting their own applications related to the same subject matter. For now, this judge appears to have noticed Amazon’s apparent litigation misconduct.

      2. 1.1.2

        Trial court decisions on 101 are not that useful unless and until sustained by the Fed. Cir. Also, Dennis, I do not think you are intending to suggest that a responsive defense to a 101 motion is limited to just the complaint contents?

        1. 1.1.2.1

          Trial court decisions on 101 are not that useful unless and until sustained by the Fed. Cir.

          And even then, of increasingly limited use — as a natural result of a growing Gordian Knot, as the nature of contradictory CAFC cases grows from the kernel of contradictory USSC cases.

          All three branches of the US government have admitted to this Gordian Knot situation. The push for cutting the knot has been stymied by those not wanting actual reform jumping up and joining the table for reform, but then adding additional ‘reform’ items that are nothing more than poison pills (or Trojan horses — pick your metaphor).

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