BASCOM also criticizes AT & T's reliance on Judge Mayer's concurrence in I/P Engine, Inc. v. AOL Inc., an unpublished decision, in which Judge Mayer concluded that claims for content-based and collaborative-based Internet filtering were unpatenable because they were “merely an Internet iteration of the basic concept of combining content and collaborative data.” Dkt. No. 28 at 15–16; 576 Fed.Appx. 982, 995 (Fed.Cir.2014). BASCOM claims that Judge Mayer's reasoning is inapplicable to this case because AT & T has not identified a non-technological analog to filtering Internet content, and because the claims of the '606 Patent are distinct.
As noted by Judge Mayer of the Federal Circuit,a “robust application” of § 101 ensures “that patent protection promotes, rather than impedes, scientific progress and technological innovation.” I/P Engine, Inc. v. AOL Inc., 576 Fed.Appx. 982, 996 (Fed.Cir.2014) (nonprecedential) (Mayer, J., concurring). Courts must evaluate patent eligibility using a two-part test.
” See I/P Engine, Inc. v. AOL Inc., 576 Fed.Appx. 982, 988-89 (Fed. Cir. 2014). In addition, the Federal Circuit has held that enablement concerns do not justify departing from the plain and ordinary meaning of a term and where the meaning of a claim term is clear, courts do not rewrite the claim to preserve its validity.
To conserve time and judicial resources, the court holds that the printed matter doctrine applies to all the asserted claims in the ’302, ’022, and ’615 Patents and will include them all in the following invalidity analysis.SeeI/P Engine, Inc. v. AOL Inc. , 576 F. App'x 982, 996 (Fed. Cir. 2014) (Mayer, J., concurring) ("From a practical perspective, there are clear advantages to addressing section 101 ’s requirements at the outset of litigation.
As noted in that earlier opinion, however, the Williams Phase II system could remain relevant for an obviousness analysis even if its automated blending system was never reduced to practice. Seeid. at 839 (citing I/P Engine, Inc. v. AOL Inc. , 576 Fed. Appx. 982, 988–89 (Fed. Cir. 2014) ). Moreover, the court at trial admitted certain non–prior art documents related to Williams as evidence of the state of the art at the time of invention.
The court disagrees. SeeI/P Engine, Inc. v. AOL Inc. , 576 Fed. App'x 982, 988-89 (Fed. Cir. 2014) (evidence of system that was not "fully functional" could still be relevant to obviousness). B. Inequitable Conduct
E.g. , Versata , 793 F.3d at 1334 ; In re BRCA1– & BRCA2–Based Hereditary Cancer Test Patent Litig. , 774 F.3d 755, 764 (Fed. Cir. 2014) ; see also Bascom Global Internet Servs., Inc. v. AT & T Mobility LLC , 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The ‘inventive concept’ may arise in one or more of the individual claim limitations or in the ordered combination of the limitations."); I/P Engine, Inc. v. AOL Inc. , 576 Fed.Appx. 982, 993 (Fed. Cir. 2014) (Mayer, J., concurring). "Step two is ‘a search 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.’ " Intellectual Ventures I LLC v. Symantec Corp. , 838 F.3d 1307, 1314 (Fed. Cir. 2016) (quoting Alice , 134 S.Ct. at 2355 ).
Some courts have found that doing a § 101 analysis without claim construction is an efficient use of court resources and saves on litigation costs because claim construction is needed before a § 101 analysis " ‘only where claim construction disputes are relevant.’ " Wolf , 2014 WL 7639820 at *6 (quoting I/P Engine, Inc. v. AOL Inc. , 576 Fed.Appx. 982, 996–97 (Fed. Cir. 2014) ). However, as neither party brought up the issue of claim construction and the matter can be resolved without claim construction, this is not an issue the Court needs to address.
E.g. , Versata , 793 F.3d at 1334 ; In re BRCA1–& BRCA2–Based Hereditary Cancer Test Patent Litig. , 774 F.3d 755, 764 (Fed. Cir. 2014) ; see also Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC , 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The ‘inventive concept’ may arise in one or more of the individual claim limitations or in the ordered combination of the limitations."); I/P Engine, Inc. v. AOL Inc. , 576 Fed.Appx. 982, 993 (Fed. Cir. 2014) (Mayer, J., concurring). "Step two is ‘a search 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.’ " Intellectual Ventures I LLC v. Symantec Corp. , 838 F.3d 1307, 1314 (Fed. Cir. 2016) (quoting Alice , 134 S.Ct. at 2355 ).
Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1325 (Fed.Cir.2011), vacated on other grounds sub nom. WildTangent, Inc. v. Ultramercial, LLC, 132 S. Ct. 2431 (2012). Early resolution of § 101 issues, where appropriate, is desirable. I/P Engine, Inc. v. AOL Inc., 576 F. App'x 982, 996 (Fed. Cir. 2014) (Mayer, J., concurring), cert. denied, 136 S. Ct. 54 (2015); see also BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 2016 WL 3514158, at *4 (Fed. Cir. June 27, 2016) ("Courts may therefore dispose of patent-infringement claims under § 101 whenever procedurally appropriate."). But see BASCOM Global, 2016 WL 3514158, at *8 (Newman, J., concurring) ("[I]nitial determination of eligibility often does not resolve patentability, whereas initial determination of patentability issues always resolves or moots eligibility.").