Mobile Acuity Ltd. v. Blippar Ltd., Appeal No. 2022-2216 (Fed. Cir. Aug. 6, 2024)
In its only precedential patent opinion last week, the Federal Circuit confirmed the invalidity of all claims of two asserted patents as abstract under Section 101. Although the Section 101 analysis follows a long line of cases, the procedural aspects of this case sounded a cautionary note to patent plaintiffs and their counsel about the practice of using representative claims in litigation.
Mobile Acuity sued Blippar for infringing two patents titled “Storing Information for Access Using a Captured Image.” In general, the patents disclosed methods and devices relating to “storing information so that it can be accessed using a captured image.” In its complaint, Mobile Acuity alleged that Blippar had infringed “one or more claims” of the patents. The Court issued a scheduling order, under which the parties were free to amend the pleadings up to a date certain.
In advance of that deadline, Mobile Acuity filed an amended complaint, alleging that Blippar had infringed “at least claim 9” of one patent and “one or more claims” of the other. Blippar filed a motion to dismiss under Rule 12(b)(6), which argued the patents were invalid, and averred that the claims 9 in both patents were “representative of the entire claim set in each respective Asserted Patent.” Mobile Acuity then filed a second amended complaint in which it continued to allege infringement of “at least claim 9” of the one patent and “one or more claims” of the other; but it went on to allege that Blippar had included five additional claims between the two patents. Blippar again moved to dismiss, continuing to argue that claims 9 were representative of the entire claim set in each respective patent. Mobile Acuity had the right to further amend without leave of court under the scheduling order, but elected not to. Instead, it stated “[t]o the extent the Court grants any aspect of Blippar’s motion, Plaintiff respectfully requests an opportunity to cure any defects through amendment.”
The district court found all claims from both patents invalid under Section 101. Mobile Acuity then sought leave to file a third amended complaint, which the court denied.
In addition to appealing the merits, Mobile Acuity appealed certain procedural issues to the Federal Circuit, including the district court’s treatment of claim 9 in each of the Asserted Patents as representative of all claims.
The Federal Circuit affirmed on each of the procedural issues (as well as the merits). With respect to the representative claim issue, the Federal Circuit confirmed that “[l]imiting the analysis of a § 101 challenge to representative claims is proper when the claims at issue are ‘substantially similar and linked to the same’ ineligible concept.” The Court then provided a reminder of the proper procedure when a representative claim is asserted:
District courts have discretion to require parties litigating Section 101 motions to identify representative claims and to articulate why (or why not) claims are representative. . . . The patent challenger who identifies a claim as representative of a group of claims bears the initial burden to make a prima facie showing that the group of claims are “substantially similar and linked to the same” ineligible concept. . . . Once this occurs, the burden shifts to the patent owner to present non-frivolous arguments as to why the eligibility of the identified representative claim cannot fairly be treated as decisive of the eligibility of all claims in the group. . . . If the patent owner fails to meet its obligation to make non-frivolous arguments in opposition to the representative claim contention, it forfeits its right to argue that the claims in the group identified by the movant are patent eligible even if the representative claim is ultimately found to be ineligible. [emphasis in original]
Notably, the burden to prove invalidity always stays with the patent challenger. Thus, “[i]n the context of a dispute over the representativeness of a claim, this burden means that if the patent owner presents a non-frivolous argument that the eligibility of the purported representative claim does not fairly represent all claims in the group for purposes of eligibility, the patent challenger bears the burden to prove either that (i) the representative claim is, in fact, representative, in that any differences among the claims are not material to the eligibility analysis (i.e., the claims are substantially similar and are linked to the same ineligible concept); or (ii) each separate claim (i.e., those not fairly represented by the purported representative claim) is ineligible for patenting.”
The Federal Circuit found this practice had been followed here. After the district court provided its analysis concerning claims 9, it asked Mobile Acuity to refer it to any limitations the plaintiff believed would change the court’s analysis. It was proper, then, for the court to consider claims 9 as representative. Moreover, because the complaint alleged infringement of all claims, it was proper for the district court to find all claims invalid.
The opinion can be found here.
By Nika Aldrich
