Tuesday, July 17, 2018

Pro se Appellant Burnett loses in a 12(b)(6)/101 case

The outcome was that pro se appellant Burnett lost:

Carl M. Burnett (“Burnett”) appeals an order of the
United States District Court for the District of Maryland
dismissing Burnett’s amended complaint for failure to
state a claim upon which relief can be granted. Burnett v.
Panasonic Corp., No. 17-cv-0236 (D. Md. Nov. 1, 2017)
(“District Court Decision”). Specifically, because the
district court held that claims 1 and 9 of U.S. Patent No.
7,107,286 (“the ’286 patent”) are invalid as directed to
ineligible subject matter under 35 U.S.C. § 101, it concluded
that dismissal pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure was appropriate. Burnett
argues that the asserted claims are patent-eligible,
that the district court erred procedurally when it failed to
construe five allegedly disputed claim terms, and that the
district court violated Burnett’s due process rights when it
failed to hold Rule 12(b)(6) and claim construction hearings.
We affirm.

As to 12(b)(6), the CAFC noted:

The Fourth Circuit reviews de novo a dismissal under
Rule 12(b)(6). Monroe v. City of Charlottesville, Va., 579
F.3d 380, 385 (4th Cir. 2009). “We have held that patent
eligibility can be determined at the Rule 12(b)(6) stage,”
but “only when there are no factual allegations that,
taken as true, prevent resolving the eligibility question as
a matter of law.”
Aatrix Software, Inc. v. Green Shades
Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).
Here, the district court appropriately assessed eligibility
at the pleading stage because the asserted claims are
patent-ineligible even when accepting as true all factual
allegations pled in Burnett’s amended complaint

Of abstract idea:

Like the concept of using a formula to convert binarycoded
decimals into pure binary numerals, which the
Supreme Court found to be an abstract idea in Gottschalk,
409 U.S. at 72, the concept of using a formula to convert
geospatial coordinates into natural numbers, if found
eligible, “would wholly pre-empt the mathematical formula
and in practical effect would be a patent on the algorithm
itself.” Claims 1 and 9 are both directed to a
similarly abstract idea.

Of Alice:

The remainder of Burnett’s arguments related to his
proposed claim constructions stand for the proposition
that “the claims recite significantly more than the purported
idea of a ‘mathematical methodology.’” Appellant
Br. at 46. But that a claim allegedly contains more than
an abstract idea does not mean the claim survives step
one, because, under that inquiry, it is enough that the
claims are directed to a mathematical methodology at all;
rather, Burnett’s argument is more appropriately assessed
under our inquiry in step two. Alice, 134 S. Ct. at
2355 (assessing under step two whether additional features
in a claim transform an otherwise a patentineligible
concept into a patent-eligible concept).


As the district noted, these additional features effectively
do no “more than simply state the [abstract idea]
while adding the words ‘apply it.’” Mayo, 566 U.S. at 72.
The preambles of both claims, as construed by Burnett,
instruct a user to implement the mathematical methodology
or instruct using a “geospatial media recorder” to do
the same. Such “wholly generic computer implementation
is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more
than a drafting effort designed to monopolize the [abstract
idea] itself.’” Alice, 134 S. Ct. at 2358 (quoting Mayo, U.S.
at 77); accord Gottschalk, 409 U.S at 70–72.


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