Reported / Citable
Background
VE Opening LLC sued Upland Software, Inc. for allegedly infringing U.S. Patent No. 9,916,079, which concerns methods for sharing information between applications on a computing device. The amended complaint alleged direct and indirect infringement of independent Claim 1 and dependent Claims 4 and 5.
Upland moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), arguing that the asserted claims were invalid under 35 U.S.C. § 101 because they were directed to an abstract idea. While the motion was pending, VE Opening notified the court of a ruling in a separate Western District of Texas case involving the same patent and materially similar allegations and arguments.
The Court’s Holding
Magistrate Judge Derek T. Gilliland recommended granting Upland’s motion as to Claim 1. Relying on the reasoning of the earlier case, the magistrate judge concluded that Claim 1 is directed to an abstract idea and lacks an inventive concept sufficient to make it patent eligible under § 101.
The magistrate judge recommended denying the motion as to dependent Claims 4 and 5, concluding that those claims are not directed to abstract ideas and therefore are patent eligible. The report treated the earlier decision as persuasive rather than binding, emphasizing that it involved the same patent, the same claims, nearly identical allegations, and substantially the same arguments.
Key Takeaways
- The ruling is a report and recommendation to the district judge, not a final order disposing of Upland’s motion.
- Independent Claim 1 was found patent ineligible because it was directed to an abstract idea and lacked an inventive concept.
- Dependent Claims 4 and 5 were found patent eligible, so the magistrate judge recommended allowing the infringement claims based on them to proceed.
Why It Matters
The recommendation illustrates how courts may resolve patent eligibility at the pleading stage when no plausible factual dispute prevents a § 101 determination. It also shows the persuasive force that an earlier eligibility ruling involving the same patent and materially identical allegations can carry in a later case.
If adopted by the district judge, the recommendation would narrow VE Opening’s case by eliminating the infringement theory based on Claim 1 while preserving its claims based on dependent Claims 4 and 5.