In ruling on § 101 motions to dismiss, the Court typically adopts plaintiff's constructions outright, if plaintiff offers any. Those constructions may or may not be enough to avoid dismissal, but I can't recall any instance where the District of Delaware actually had to reject a construction as implausible under the FRCP 12(b)(6) standard.
Until now. In Synkloud Tech. v. HP, Inc., C.A. No. 19-1360-RGA (D. Del. Sep. 28, 2020), plaintiff tried to bake the § 101 "non-conventional" standard into the proposed claim construction. Clever! But Judge Andrews described the problems with that approach as "self-evident":
Plaintiff states that a person of ordinary skill in the art would understand that the terms “printing device” or “recipient’s printer over a network” requires “a non-conventional printer that is not a generic computer.” . . . First, it seems to me self-evident that “a non-conventional printer” cannot be a valid construction.
Not only that, but the proposed construction directly contradicted the specification:
Second, the specification contradicts Plaintiff’s position, describing “printer” as “an ink-jet printer, a dye-sublimation printer, a laser printer, or the like.” . . . I will reject this construction as implausible in light of the specification.
After rejecting the proposed construction, the Court invalidated the sole asserted claim and dismissed the relevant part of the complaint.
Dismissal with Prejudice
Interestingly, Judge Andrews dismissed with prejudice, after noting that the plaintiff had not included anything about patent eligibility in its complaint, and had not requested leave to amend.
Fact Issues Precluded Dismissal of One Claim
The Court also dismissed allegations related to two other patents, after finding that the claims failed to set forth "how" the claimed abstract ideas are achieved.
Another interesting point, though, is that Judge Andrews declined to hold ineligible the asserted claim from a forth, unrelated patent due to possible fact issues.
That claim involved a storage device located on the network, and it described software for the computer—in fairly technical terms—that allowed the computer to treat the network storage device as a local device:
To explain how the device driver achieves the desired result, the claims state only that the virtual adapter “control[s] the NAD in a way indistinguishable from the way as a physical host bus adapter device controls device so that the host recognizes the NAD as if it is a local device.” This may not be enough.
Judge Andrews held that the FRCP 12(b)(6) standard precluded an ineligibility finding:
I cannot say what a person of ordinary skill in the art would understand from the specification. . . . Consequently, I cannot say what is required to be disclosed about controlling physical host bus adapters.
Fun Fact!
The opinion includes the word "kludgy," a term I usually only hear in the computer world (not the legal world):
According to Plaintiff, the patent is directed to solving a problem with computer technology, i.e., limited storage space on a local device and “kludgy” access to network attached storage at the time of the invention. (D.I. 21 at 26).
Somehow, according to Lexis, only three different courts have ever used this term in an opinion, and all three of them are in Delaware: The District of Delaware (in this opinion), the Delaware Court of Chancery, and the Delaware Court of Common Pleas (?!).
That or my Lexis is broken.
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