I told you all! I told you we'd hear about this case again! Did you listen? No! I was called a fool, a madman! But who's laughing now! Whhoooo's laughing nowwwwwww!
I speak of course of the Federal Circuit decision in Hantz Software, LLC v. Sage Intacct, Inc., No. 2022-1390, 2023 WL 2569956 (Fed. Cir. Mar. 20, 2023). As we discussed last time, when I made my dire warning that you fools failed to heed, the Federal Circuit there reversed the district court judgment invalidating several unasserted claims under 101, noting that the Plaintiff had taken pains to clarify that only 4 specific claims were at issue, specifically saying so at the hearing.
Shortly thereafter, Judge Noreika cited Hantz in Buffalo Patents, LLC v. Spotify USA Inc., C.A. No. 22-1335-MN (D. Del. Apr. 10, 2023), and found that it precluded entry of judgment in a less clear-cut scenario where the plaintiff had asserted infringement of "At least claims" x, y, and z of the asserted patents.
This leads us to last week's decision by visiting judge Slomsky in BNP Holdings LLC v. Intuit Inc., C.A. No. 1-22-65-JHS (D. Del. Oct. 11, 2023), which came to a different conclusion. In that case, the plaintiffs' complaint fell somewhere between the ones in Hantz and Spotify -- with the plaintiff specifically referencing and asserted only claim 1. There was no "at least" language as in Spotify but there also weren't any affirmative statements that the other claims were totally not at issue as in Hantz.
In granting the defendants' motion to dismiss under 101 (the patent was pretty bad), Judge Slomsky held that the various unasserted claims were unpatentable as well, noting:
Although Plaintiff’s Complaint asserts infringement of only Claim 1, Defendant still argues that the unasserted claims are also ineligible under § 101. The unasserted Claims are substantially similar to Claim 1 which is representative of the other claims. As such, they also are ineligible for patenting under § 101.
Id. at 15 n. 10.
Interestingly, Plaintiff failed to cite either Hantz or Spotify in its briefing, instead simply arguing that asserted claim 1 was not representative. Neither case was addressed or cited in the opinion.
I'm sure we'll see this one cited again too (he said in his most passive aggressive Midwestern affect).
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