United States District Court, D. Delaware
HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE
Wilmington this 2nd day of January
defendants in the above-listed cases have filed Rule 12
motions to dispose of patent infringement claims on the bases
that certain patent claims are invalid under 35 U.S.C. §
101, because they are allegedly directed to unpatentable
the above-listed cases brought by Arendi S.A.R.L.
("Arendi") are unrelated to the above-listed cases
brought by Smart Locking Technologies, LLC ("Smart
the Court heard oral argument in all the above-listed cases
on December 20, 2019 and has considered the parties'
respective briefs and related filings;
the Court continues to find that its experimental procedure
of addressing multiple Section 101 motions from separate and
unrelated cases in one hearing is an efficient use of
judicial resources and a beneficial tool for resolving the
merits of Section 101 motions;
THEREFORE, IT IS HEREBY ORDERED that, with respect
to the above-listed Smart Locking cases, Defendants' Rule
12(b)(6) motions to dismiss (C. A. No. 19-992 D.I. 9, 16; CA.
No. 19-993 D.I. 8, 15) are DENIED.
THEREFORE, IT IS HEREBY FURTHER ORDERED that, with
respect to the above-listed Arendi cases, Defendants'
Rule 12(c) motions for judgment on the pleadings (CA. No.
12-1595 D.I. 115; C. A. No. 12-1596 D.I 122; C. A. No.
12-1599 D.I. 123; C. A. No. 12-1601 D.I. 123; C. A. No.
12-1602 D.I. 115; C. A. No. 13-919 D.I. 122; C. A. No. 13-920
D.I. 126) are GRANTED IN PART and
DENIED IN PART, as follows:
motions are DENIED with respect to representative claim 1 of
U.S. Patent No. 7, 917, 843.
motions are GRANTED with respect to representative claim 93
of U.S. Patent No. 7, 496, 854, representative claim 2 of
U.S. Patent No. 7, 921, 356, and representative claim 1 of
U.S. Patent No. 8, 306, 993.
motions are TAKEN UNDER ADVISEMENT with respect to asserted,
arguably non-representative, dependent claims of the
'854, '356, and '993 patents; the parties shall
continue to comply with the process for supplemental briefing
previously set out (see, e.g., C. A. No. 12-1595
Court's Order is consistent with the following bench
ruling announced at that the conclusion of the December 20
hearing (see Tr. at 106-18):
I'm going to talk about the motions in the order that
they were argued earlier today. First, [are] the Smart
Locking cases. The issue in front of me is Defendants'
renewed [Rule] 12(b)(6) motion to dismiss for failure to
state a claim. Defendants' motion is denied. Let me try
to explain why.
The motion contends that two asserted patents, [U.S. Patent
Nos.] 6, 300, 873 and 6, 696, 918, are invalid under Section
101 due to lack of patentable subject matter. The legal
standards that I'm applying ... are set out [in the
following cases.] ... [As to] the Rule 12(b)(6) standard I
hereby incorporate and adopt by reference the articulation of
that standard in the DiStefano Patent Trust [III] v.
Linkedln decision, . . . which was a decision of mine in
2018, affirmed by the Federal Circuit.... I also adopt the
Section 101 standards articulated by the Federal Circuit in
Berkheimer v. HP, Inc. .. .
The parties agree in the Smart Locking cases that one claim,
claim 36 of the '873 patent, is representative and that
the Court need assess the patentability of only this one
claim. The parties agree that no claim construction disputes
need to be resolved before addressing the motion.
The Court concludes that Defendants have failed to make the
necessary showing at both Steps 1 and 2 of the Alice
Starting with Step 1. The claims are directed to a device, a
mechanism[, ] which in the Court's view is not abstract.
Although Defendants have identified an abstract idea,
specifically "providing temporary access to a
location," I'm not persuaded that the claim is
directed to this abstract idea.. .. The character as a whole
of claim 36, the representative claim, is a physical device
with two specific tangible components: an actuator and an
access code entry unit. The access code entry unit further
must be configured to accept a one-time use access code as
described in columns 7 and 8 of the specification. Further,
figures 1 and 2 of the patent illustrate embodiments of the
access code entry unit[, ] which ...