Patent Infringement Lawsuit Dismissed Because Patent Claims Directed to a Patent-Ineligible Abstract Idea

Monday, November 6, 2017

U.S. District Court Judge Paula Xinis granted defendant Panasonics’ Rule 12(b)(6) motion to dismiss for failure to state a claim because plaintiff Burnett’s patent was directed to abstract ideas under Section 101 of the patent statute.  Applying the two-step inquiry of the U.S. Supreme Court’s Alice Corp. Pty. v. CLS Bank Int’l case, Judge Xinis found that the patent claims were directed to patent-ineligible concepts under the first step of Alice.  In particular, the patent claims, which recited a device and method for converting geospatial coordinates into alphanumerical representations, covered a broad theoretic application of a mathematical methodology not dependent on a device to achieve its outcome.  Next, applying the second step of Alice, Judge Xinis found that the patent claim elements did not contain an independent inventive concept that transformed the claims into a patent-eligible application.  The claimed mathematical methodology was not dependent on the claimed computer device to achieve its outcomes, i.e., the computer recited in the patent claims was merely as a tool in completing the claimed conversion step, and did not “facilitat[e] the process in a way that a person making calculations or computations could not.”  Burnett v. Panasonic Corp. of N. Am., No. PX-17-00236, 2017 WL 4947013 (D. Md. Nov. 1, 2017).