United States: Alice Corp. Reaches The Northern District: Judge Donato Grants Motion To Dismiss Software Patent Claims Under Section 101

Last Updated: October 7 2014
Article by Monte Cooper and Daniel Justice

Order Granting Defendant's Motion to Dismiss Infringement Claims for Invalidity, Open Text S.A., v. Alfresco Software LTD, et al., Case No. 13-cv-04843-JD

Thanks to the Supreme Court, Defendants may have gained a powerful pre-Markman procedural tool to attack the validity of certain kinds of patents (particularly business method and software patents) that arguably embody abstract ideas. Last week, Judge James Donato granted a Rule 12(b)(6) motion in advance of claim construction and issued the first reported decision in the Northern District invalidating patent claims pursuant to 35 U.S.C. Section 101 under the Supreme Court's new standard for patentability announced last term in Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014). Both the substantive and procedural aspects of the case show that Alice may have significantly impacted the role Section 101 plays in patent litigation.

In particular, in Open Text S.A. v. Alfresco Software Ltd., the defendants Alfresco Software Ltd., Alfresco Software, Inc., and Carahsoft Technology Corp. (collectively the "defendants") moved pursuant to Rule 12(b)(6) to dismiss two of the nine patent infringement claims asserted by plaintiff Open Text, S.A. for invalidity. The software patents describe an alleged method and technological implementation for interacting with customers and gaining marketing feedback through online communications, including email. For example, the software could be used to identify a subset of customers and ask them "How was your order?" Customers who responded positively would receive a "Thank You" while customers who responded negatively would receive, "I'm sorry, what can we do better?" Two of the relevant claims from one of these patents reviewed by Judge Donato read as follows:

37. A computer readable storage medium for facilitating a network based dialogue, comprising instructions translatable for:

assembling a set of first corresponding participants, wherein assembling the first set of corresponding participants comprises executing a first instruction of a first program in conjunction with each of the first corresponding participants, wherein the first instruction is operable to determine the occurrence of a first specified event in conjunction with each of the first corresponding participants;

assembling a set of second corresponding participants, wherein

each of the set of second corresponding participants is in the set of first corresponding participants; and

executing a second instruction in conjunction with each of the second set of corresponding participants, wherein the second instruction is associated with a first action to be performed in conjunction with each of the set of second corresponding participants.

38. The computer readable storage medium of claim 37, wherein the first specified event is an interaction with a web site.

Likewise, two of the other relevant system claims from the second patent analyzed by Judge Donato read:

21. An electronic dialog system comprising:

a data storage location;

a dialog computer interfaced with the data storage location and a communications channel, the dialog computer comprising a processor and a tangible computer readable medium storing instructions executable to:

obtain a set of first corresponding participants;

execute a first instruction of a program, wherein the program is associated with each of the first corresponding participants, wherein the first instruction causes the dialog computer to communicate with the communications channel to prompt the communications channel to send a first communication to the set of first corresponding participants;

determine that a specified event has occurred for a set of second corresponding participants, wherein the set of second corresponding participants is in the set of first corresponding participants;

execute a second instruction of the program to cause the dialog computer to take a first action in conjunction with each of the corresponding participants; and

store a set of data at the data storage location that tracks the state of a dialog.

22. The electronic dialog system of claim 21, further comprising an email server coupled to the dialog computer, and wherein the dialog computer communicating with the first communications channel further comprises communicating with the email server to cause the email server to send a first email to the set of first corresponding participants.

In ruling on the motion to dismiss directed at the patentability of these claims, Judge Donato first found he could address validity under Section 101 at the motion to dismiss stage before any claim construction briefing because the parties had not sought construction of any terms in the course of the motion to dismiss briefing. After finding it procedurally proper to rule on the motion at this early stage of the proceedings, Judge Donato moved to the substantive task of determining whether the claims at issue were patent eligible, finding that they were not. In so ruling, he relied heavily on the recent Supreme Court opinions in Mayo Collaborative Services v. Prometheus Labs, Inc. 566 U.S. 10 (2012) and Alice Corp. v. CLS Bank Int'l. These opinions lay out a two-part test for determining patent invalidity in this context: (1) determining whether the claims at issue are directed to one of three patent-ineligible concepts: laws of nature, natural phenomena, or abstract ideas; and (2) determining whether the elements of the claim contain an "inventive concept" sufficient to make that claim in practice describe more than one of the three ineligible concepts.

Turning to the first inquiry, Judge Donato found the claims at issue merely amounted to abstract ideas. He found that "[t]hey recited a very simple computer-driven method to engage in the commonplace and time-honored practice of interacting with customers to promote marketing and sales." He further found that the claims described "the most basic and widely-understood principal of marketing," namely seeking customer feedback to improve customer experience. This finding, however, did not settle the issue. Even though the claims were directed to an abstract idea, Judge Donato had to move to the second inquiry and examine the elements of the claims, individually and in combination, to determine whether there was an "inventive concept" that transformed the abstract ideas into patent-eligible inventions. Judge Donato found that under Alice Corp., the asserted claims failed. The Supreme Court in Alice Corp. held that a claim directed to an abstract idea did not become patent eligible by "merely requir[ing] generic computer implementation." Similarly, Judge Donato found that "[t]he asserted claims in both patents implement the basic marketing scheme on a generic computer system without any meaningful limitations." For example, he found that the recitations of a "computer readable storage medium" or an "email server coupled to the dialog computer" were not inventive components, but rather were generic computer technology that did not sufficiently limit the nature of the abstract ideas. Thus, he found the claims invalid and granted defendants' motion to dismiss.

While this is the first post-Alice decision to invalidate software patents under Section 101 in the Northern District of California, other courts have already fallen in line with Alice and ruled the same – many also via Rule 12 mechanisms. Indeed, Federal Circuit Judge Bryson, sitting as a District Judge by designation in the Eastern District of Texas, issued such a ruling earlier this month in Loyalty Conversion Systems v. American Airlines, Inc., No. 2:13-cv-655 (E.D. Tex. Sep. 3, 2014), and Judge Donato cited that fact when concluding that it was appropriate to rule on the patent eligibility issue based on the pleadings, with no claim construction.

As a result of the Alice decision, entities looking to patent their software must now be careful to ensure that either the function of the software, or the manner in which it utilizes computers, are sufficiently inventive. If the software uses generic computer and Internet technology to carry-out an idea like obtaining customer feedback, it may not be patentable post-Alice.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
16 Oct 2018, Other, Washington, DC, United States

Orrick Partner Rohit Sachdev is proud to Chair the inaugural Storage East summit put on by Infocast on October 16-17th in Washington, D.C.

16 Oct 2018, Other, Washington, DC, United States

Orrick Partner Rohit Sachdev is proud to Chair the inaugural Storage East summit put on by Infocast on October 16-17th in Washington, D.C.

17 Oct 2018, Speaking Engagement, New York, United States

Employment partner, Jill Rosenberg is participating in PLI’s Employment law Institute 2018.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions