United States District Court, D. Delaware
LEONARD P. STARK UNITED STATES DISTRICT JUDGE.
is a patent infringement case. On December 1, 2014, plaintiff
Yodlee, Inc. ("Yodlee") filed a complaint alleging
infringement of U.S. Patent Nos. 6, 199, 077 (the
"'077 patent"), 6, 317, 783 (the '"783
patent"), 6, 510, 451 (the '"451 patent"),
7, 263, 548 (the '"548 patent"), 7, 424, 520
(the '"520 patent"), 7, 752, 535 (the
"'535 patent"), and 8, 266, 515 (the
January 23, 2015, defendant Plaid Technologies, Inc.
("Plaid") moved to dismiss under Federal Rule of
Civil Procedure ("Rule(s")) 12(b)(6). (D.I. 11)
Plaid contends that all of the asserted claims are directed
to patent-ineligible subject matter. Plaid's motion to
dismiss was referred to United States Magistrate Judge
Christopher J. Burke for a report and recommendation.
(See generally D.I. 7)
May 23, 2016, Judge Burke issued a 65-page Report and
Recommendation, concluding that Plaid's motion to dismiss
should be granted in part and denied in part. (See
D.I. 185 ("R&R")) The parties filed their
objections to the R&R on June 9, 2016 (see D.I.
198, 199), and their responses on June 27, 2016 (see
D.I. 210, 211).
October 12, 2016, Plaid filed a motion for summary judgment.
(D.I. 264) Among other requested relief, Plaid seeks judgment
of patent ineligibility with respect to all asserted claims
of the seven patents in suit. (See D.I. 265 at
Evaluating a motion to dismiss under Rule 12(b)(6) requires
the Court to accept as true all material allegations of the
complaint. See Spruill v. Gillis, 372 F.3d 218, 223
(3d Cir. 2004). The Court may grant such a motion to dismiss
only if, after "accepting all well-pleaded allegations
in the complaint as true, and viewing them in the light most
favorable to plaintiff, plaintiff is not entitled to
relief." Maio v. Aetna, Inc., 221 F.3d 472, 482
(3d Cir. 2000) (internal quotation marks omitted).
Summary judgment is appropriate if "there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law." Rule 56(a). The moving
party bears the burden of demonstrating the absence of a
genuine issue of material fact. See Matsushita Elec.
Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574,
Pursuant to 35 U.S.C. § 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 therefor." There are three
exceptions to § 101's broad patent-eligibility
principles: "laws of nature, physical phenomena, and
abstract ideas." Diamond v. Chakrabarty, 447
U.S. 303, 309 (1980). Relevant here is the third category,
"abstract ideas, " which "embodies the
longstanding rule that an idea of itself is not
patentable." Alice Corp. Pty. Ltd. v. CLSBank
Int'l, 134 S.Ct. 2347, 2355 (2014) (internal
quotation marks omitted). In Mayo Collaborative Services
v, Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012),
the Supreme Court set out a two-step "framework for
distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts."
Alice, 134 S.Ct. at 2355. First, courts must
determine if the claims at issue are directed at a
patent-ineligible concept - in this case, an abstract idea
("step 1"). See Id. If so, the next step
is to look for an "'inventive concept' - i.e.,
an element or combination of elements that is sufficient to
ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself
("step 2"). Id. The two steps are
"plainly related" and "involve overlapping
scrutiny of the content of the claims." Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
Court has carefully reviewed the R&R and all relevant
filings and has evaluated Plaid's motion to dismiss
de novo. See Masimo Corp. v. Philips Elec. N. Am.
Corp., 62 F.Supp.3d 368, 379 (D. Del. 2014); 28 U.S.C.
§ 636(b)(1); Rule 72(b)(3). For the reasons given in
Judge Burke's detailed § 101 analysis and further
explained below, IT IS HEREBY ORDERED THAT:
(a) both parties' objections to the R&R (see
D.I. 198, 199) are OVERRULED;
(b) the R&R (D.I. 185) is ADOPTED in full; and
(c) Plaid's motion to dismiss (D.I. 11) is GRANTED in
part and DENIED in part.
Plaid's motion for summary judgment as it relates to
ineligibility (D.I. 264; see D.I. 265 at 3-18) is
GRANTED in part, DENIED in part, and DENIED AS MOOT in part.
an initial matter, the Court is unpersuaded by Plaid's
argument that Judge Burke incorrectly interpreted and applied
Enfish, LLC v. Microsoft Corporation,822 F.3d 1327
(Fed. Cir. 2016). (See generally D.I. 199 at 5-12)
The Court does not read the R&R to "require every
important aspect of the claim to be captured in the asserted
abstract idea, " as Plaid suggests. (D.I. 199 at 5
(internal quotation marks omitted)) Rather, Judge Burke's
analysis properly considered, for example,
"the key concept in
the claim" and the "rationale for the
invention" underlying the '783 patent. (R&R at
27 (emphasis added)) An invention's underlying motivation
(as incorporated by and expressed in the claim language) ...