Shifting the § 101 Burden

The Eastern District of Texas has long been known as a favorable forum for patentees to survive motions to dismiss or for summary judgment based on invalidity under 35 U.S.C. § 101.[1] Indeed, a 2015 study by the Electronic Frontier Foundation found that while the success rate for defendants who file § 101 motions nationwide was over 70%, only 27% of such motions found success in EDTX.[2] The jurisdiction has therefore been regarded as plaintiff-friendly with respect to § 101.[3] It may soon become regarded as the jurisdiction that started a shift in how burdens are applied to parties in the § 101 context.

Last month, in Voxathon LLC v. Alpine Electronics of America, Inc., Judge Gilstrap granted the defendants' Rule 12(b)(6) motions after finding that the patent-in-suit was ineligible for patent protection on § 101 grounds.[4] The patent-in-suit, U.S. Patent No. 6,442,261, entitled "Call Recovery Method and Apparatus for an Attendant Telephone Set," related to "computer-implemented systems and methods for transferring information efficiently."[5] After applying the two-part test of Alice and Mayo, the Court determined the patent was invalid under § 101 because it claimed "really nothing more than the automation of responding to the sender of a message received on a telephone."[6] In applying the two-part test, the Court found that the patent's claims suffered from many of the same flaws that are usually present in claims invalidated under § 101: they represented "routine tasks that could be performed by any human"[7]; they disclosed use of a device that "merely performs the abstract idea"[8]; and they included "mere automation through a generic computer" to perform those tasks.[9]

The most interesting part of the Court's opinion pertains to its application of step two of the Alice/Mayo analysis. That step requires the Court to "determine whether an inventive concept exists that is sufficient to transform the claim into patent-eligible subject matter."[10] The Court echoed the Supreme Court in Mayo in noting that this step "requires more than simply stating the abstract idea 'while adding the words 'apply it.'"[11] The Court then shifted the burden under step two to the plaintiff:

Since the proving of a negative is historically disfavored, once Defendants make a prima facie showing that an inventive concept is absent, it falls upon Voxathon to show that there is, in fact, an inventive concept actually present.[12]

The Court found the defendants had made a prima facie showing and therefore proceeded to analyze Voxathon's assertions that an inventive concept existed in the claims.[13] After finding Voxathon's arguments unpersuasive, the Court granted defendants' motions and held the patent invalid.[14]

This opinion thus provides a new tool in defendants' tool belts with respect to § 101 defenses. Under Voxathon, a defendant can simply point to the absence of an inventive concept in the challenged claims for step two of the analysis and then invite the plaintiff to establish that such an inventive concept actually exists. Such a burden-shift in the analysis may have a noticeable impact on how § 101 motions are argued and decided, especially in the Eastern District of Texas.

[1] See, e.g., Eslinger, Bonnie, "Alice Motions Face Roadblocks in Texas' Eastern District: EFF," Law360 (Aug. 19, 2015) (available at http://www.law360.com/articles/692815/alice-motions-face-roadblocks-in-texas-eastern-district-eff).

[2] See id.

[3] See Coe, Erin, "7 Ways to Survive an Alice Patent Challenge," Law360 (Dec. 15, 2015) (available at http://www.law360.com/ip/articles/736051?nl_pk=fd54d2fc-eec4-4823-9fd9-fbd345383346&utm_source=newsletter&utm_medium=email&utm_campaign=ip) (suggesting EDTX as a favorable venue for patent owners concerned with § 101 challenges).

[4] No. 2:15-cv-562-JRG, 2016 WL 260350 (E.D. Tex. Jan. 21, 2016).

[5] Id. at *1.

[6] Id. at *3.

[7] Id.

[8] Id. at *4.

[9] Id. at *5.

[10] Id. at *4.

[11] Id. (citation omitted).

[12] Id.

[13] See id.

[14] Id. at *4-*5.