In April 2022, judges in the Northern District of California issued several interesting decisions on patent subject matter eligibility under 35 U.S.C. § 101. Two were decided on Rule 12(c) motions for judgment on the pleadings, while one was decided on a Rule 12(b)(6) failure to state a claim motion.
In Wisk Aero LLC v. Archer Aviation,[1] Judge William H. Orrick ruled on a 12(c) motion against two of the asserted patents at the same time as his claim construction order. The two challenged patents covered claims on optimizing the best parameters for controlling the flight of an aircraft.
In Step One of the Mayo/Alice test, the court found that the challenged patents claimed mathematical techniques with improved input models to help control the flight of an aircraft, and thus claimed patent-ineligible subject matter. In Step Two, the court found that the claims only recited generic aircraft components performing their conventional functions.
Wisk requested leave to amend the pleadings if the court granted the motion. To avoid another round of motion practice following an amendment, the court asked Wisk to set forth the specific facts it would plead if given leave, and treated those added facts as pleaded allegations for this motion. None of the additional facts changed the analysis.
In Broadcom Corp. v. Netflix Inc.,[2] defendant Netflix brought a 12(c) motion for a finding of ineligibility of Broadcom’s asserted patent claims. Judge James Donato granted the motion but provided Broadcom leave to amend. The representative challenged claim recited a method for allocating jobs to different computers in distributed computing systems.
For Step One of the Mayo/Alice test, the court found Broadcom’s claim to be directed to the abstract idea of allocating tasks across a system of servers. The court found the claim did not recite an improvement to computer functionality, but rather recited a process that can be performed in the human mind. The court analogized the claimed process to longstanding real-world practices such as directing guests at a restaurant to specific sections based on their preferences.
As to Step Two, the court found no inventive concept, as the claim merely recited conventional functions, performed in a conventional order, on conventional computer technology.
While the court provided Broadcom the opportunity to amend its complaint, the court noted that it “has some doubt that Broadcom can amend around this [101] problem,” “[i]n light of the plain language of the claims in the patent.”
In 10Tales Inc. v. TikTok Inc.,[3] Judge Yvonne Gonzalez Rogers denied a motion to dismiss under 12(b)(6) without prejudice. The court noted that claim construction would be helpful to “clarify the basic character of the claimed invention.” Because claim construction had yet to occur, the court found that it could not “at this juncture, adjudicate the issue of whether the patent is directed to patent-ineligible ideas.”
There are a few helpful takeaways from these decisions. They make clear that judges in the Northern District remain willing to entertain 101 motions, and these motions can be an appropriate vehicle to get a case resolved early. Raising 101 too early, however, can result in rounds of briefing that leave the issue unresolved. As these decisions suggest, it may be wise to wait until the claim construction stage to raise a 101 defense using a 12(c) motion, rather than a 12(b)(6) motion in lieu of an answer at the pleading stage. In addition, practitioners should consider how to deal with proposed amendments to the complaint up front, lest they give the party responding to a 101 motion an easy out for a second bite at the apple.
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