Eolas Technology filed patent infringement actions against Amazon, Google, and Walmart in the Eastern District of Texas in 2015. The asserted patent generally relates to remote computer systems that allow users at a client computer to connect to a network to locate, retrieve, and manipulate objects in an interactive way. Eolas filed an early motion for summary judgment of "no invalidity" under Section 101 of the Patent Act. The Texas court denied the motion without prejudice. In 2017, the defendants successfully transferred the three cases to the Northern District of California.

The defendants moved for summary judgment, arguing that the asserted claims were not patentable under Section 101. The defendants characterized the claims as being directed to the abstract idea of "providing interactive applications on the web using distributed computing." Eolas, on the other hand, argued that the asserted claims are directed to "specific improvements in areas of security, scalability, and more."

At Step One of the Mayo/Alice test, District Judge Jon S. Tigar held that the claims do not specify how to configure the interactive-content application and the distributed application to render them capable of enabling the interactivity on the client computing browser. Citing Interval Licensing LLC, the court reasoned that the claim's terms require only results without specifying how to achieve them, and, as a result, "the claim in effect encompasses all solutions and, therefore, encompasses a patent-ineligible abstract concept rather than an arguably technical improvement."

At Step Two, the court rejected Eolas's argument that certain claim elements provide an inventive concept because those same elements were held to be abstract at Step One. Because the purported limitations providing an inventive concept were themselves abstract in nature, they could not render the claims patent-eligible as "[a] claim for a new abstract idea is still an abstract idea." The remaining aspects of the asserted claims did not recite anything that would permit a finding that the asserted claims amount to significantly more than a patent on the abstract idea itself. The Court thus found all asserted claims invalid under Section 101 and entered final judgment in favor of the defendants.

Continuing the theme recognized in our prior coverage of Section 101, Judge Tigar's opinion highlights the potential strategic advantage of moving to transfer cases with potential Mayo/Alice arguments to the Northern District from other venues that may be perceived as less inclined to invalidate claims under Section 101.

Eolas Techs. Inc. v. Amazon.com Inc., No. 17-cv-3022-JST, Dkt. No. 858 (N.D. Cal. May 16, 2022)

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved