Opinion
No. C 12–05036 JSW
2013-09-24
Internet Patents Corporation, f/k/a Insweb Corporation, Plaintiff, v. The General Automobile Insurance Services, Inc. d/b/a The General, Permanent General Assurance Corporation, and Permanent General Assurance Corporation of Ohio, Defendants.
L. Eric Loewe, Internet Patents Corporation, Folsom, CA, Joseph A. Greco, Justin T. Beck, Kimberly Paul Zapata, Beck, Bismonte & Finley, LLP, San Jose, CA, Brian Lawrence King, Michael Pierre Adams, Winstead PC, Austin, TX, for Plaintiff.John F. Triggs, Ryan D. Levy, Waddey and Patterson PC, Nashville, TN, John Dennis O'Connor, O'Connor and Associates, San Francisco, CA, for Defendants.
Motion granted.
L. Eric Loewe, Internet Patents Corporation, Folsom, CA, Joseph A. Greco, Justin T. Beck, Kimberly Paul Zapata, Beck, Bismonte & Finley, LLP, San Jose, CA, Brian Lawrence King, Michael Pierre Adams, Winstead PC, Austin, TX, for Plaintiff. John F. Triggs, Ryan D. Levy, Waddey and Patterson PC, Nashville, TN, John Dennis O'Connor, O'Connor and Associates, San Francisco, CA, for Defendants.
ORDER GRANTING DEFENDANTS' MOTION TO DISMISS
JEFFREY S. WHITE, UNITED STATES DISTRICT JUDGE
Now before the Court is the motion to dismiss filed by Defendants, The General Automobile Insurance Services, Inc., d/b/a The General, Permanent General Assurance Corporation, and Permanent General Assurance Corporation of Ohio (collectively, “Defendants”). Having considered the parties' papers, relevant legal authority, and the record in this case, the Court finds the matter suitable for disposition without oral argument. See N.D. Civ. L–R 7–1(b). Therefore, the hearing date of October 4, 2013 is HEREBY VACATED. The Court GRANTS the Defendants' motion to dismiss with prejudice.
3. Application of Section 101 to '505 Patent.
The '505 Patent claims the exclusive right to allow the use of a conventional web browser Back and Forward navigational functionalities without data loss in an online application consisting of dynamically generated web pages. (Patent at Abstract.) The '505 Patent also discloses an intelligent user interface for “re-entrant editing; error trapping, flagging, and correction” although these applications are not specifically claimed. ( Id.) The Patent identifies the problem of a user having to re-enter all or part of the information required by an online application, in this case for applications to receive insurance. To differentiate itself from the prior art, the Patent allegedly expands on the conventional aspects of the then-current multi-page online application forms by “maintain[ing] virtual applications information, relative dependencies, and information context obtained and/or derived from each pane by the user/applicant.” ('505 Patent at 9:60–63.) On its face, the '505 Patent purports to propose a solution to a well-known problem regarding user navigation in online multi-page application forms. However, the Patent does not actually disclose or recite an example of the solution to this problem. The mere abstract idea that an invention could address the challenges of retaining information lost in the navigation of online forms fails to satisfy the requirements of patentability and renders the Patent is ineligible under § 101. The Court finds that by setting out the abstract idea of a known technological challenge without setting out any specific disclosures, the Patent “added no elements or combination of elements, sometimes referred to as the inventive concept, sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law [or the abstract idea].” Mayo, 132 S.Ct. at 1294.
4. Machine–or–Transformation Test.
In response to the argument that the Patent merely recites the challenge, but fails to propose a discrete and new technological solution, Plaintiff contends that its claims are patent-eligible under the machine-or-transformation test based on the position that each claim and the desired result require computer implementation. However, the “mere implementation on a computer of an otherwise ineligible abstract idea will not render the asserted ‘invention’ patent eligible.” CLS Bank, 685 F.3d at 1351 (citing Fort Properties , Inc. v. American Master Lease LLC, 671 F.3d 1317, 1322 (Fed.Cir.2012) (“[A]n abstract concept cannot be transformed into patentable subject matter merely because of connections to the physical world.”); see also Dealertrack, 674 F.3d at 1333 (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.”).
Here, although the platform of the invention is computer-based as the technology relates to online applications systems, Plaintiff has failed to show how the desired result of the patent is coupled with or integrated into a specific process. The addition of a computer limitation does not transform the abstract idea into a patentable invention.
Accordingly, Plaintiff's claims fail as a matter of law because the asserted patent is invalid under 35 U.S.C. § 101 for lack of patent-eligible subject matter.
CONCLUSION
For the foregoing reasons, Defendants' motion to dismiss is GRANTED with prejudice. A separate judgment shall issue and the Clerk shall close the file. In addition, because the patent upon which the related cases are dependent has been declared invalid, the Court shall issue orders to show cause in those matters regarding dismissal for invalidity (cases nos. 12–5035 JSW, 12–6505 JSW, and 12–6506 JSW). See Barkeij v. Lockheed Aircraft Corp., 210 F.2d 1, 2 (9th Cir.1954) (citations omitted) (holding that “it is the duty of the court to dismiss a patent infringement suit whenever it affirmatively appears that the patent is invalid.”).
IT IS SO ORDERED.