If at First You Don’t Succeed, Amend: Judge Cronan Finds Digital Video Patents Directed to Unpatentable Abstract Ideas, But Grants Leave to Amend | Patterson Belknap Webb & Tyler LLP
On March 24, 2023, Judge John P. Cronan found the asserted claims of two patents to be directed to abstract ideas under 35 U.S.C. § 101, but sua sponte granted leave to amend the complaint and plead additional facts relevant to eligibility.
Plaintiff Diatek Licensing alleged infringement of claims across two patents directed to methods used to display video “trick modes” such as rewind and fast-forward. Defendant AccuWeather moved to dismiss Diatek’s Amended Complaint on the grounds that the asserted patent claims were directed to abstract ideas ineligible for patenting under Section 101.
Judge Cronan granted AccuWeather’s motion, finding that each asserted claim describes “subject matter that is not patent-eligible.” At step one of the Alice test, the Court explained that computer software patents are directed to patent-eligible subject matter when they claim “a ‘specific’ improvement in computer capabilities or network functionality, rather than only claiming a desirable result or function.” The two asserted patents failed this test because they merely “describe[] a problem, then claim[] functional steps that purport to solve that problem,” which is not a “specific technological innovation” related to the use of “trick modes” in digital video.
At step two of the Alice test, the Court explained that “neither the Asserted Claims nor the allegations in the Amended Complaint make plausible the inference that the claim elements, or their ordered combination, ‘involve more than performance of well-understood, routine, and conventional activities previously known to the industry.’” In reaching this conclusion, Judge Cronan explained that “a complaint may adequately allege the existence of an inventive concept in order to survive a motion to dismiss” by alleging with specificity (1) “how prior implementations of that abstract idea functioned,” (2) “why those prior implementations were inferior,” and (3) why “it was unconventional” to perform certain steps in the claimed methods. The Court then sua sponte granted Diatek Licensing “leave to file a Second Amended Complaint, in the event that Plaintiff believes it can plead facts that would make plausible the inference that the activities recited in at least one of the Asserted Claims were not well-understood, routine, or conventional.”
Diatek Licensing LLC v. AccuWeather, Inc., No. 21 Civ. 11144 (JPC) (S.D.N.Y. Mar. 24, 2023)
