EDTX Monthly Wrap-Up: February 2020

A recent case in the Eastern District of Texas touched on the distinction between claim representativeness for the purposes of infringement and representativeness for the purposes of subject-matter eligibility under 35 U.S.C. § 101. Judge Gilstrap concluded that a statement that a claim is representative for purposes of infringement—without more—is insufficient to show that a claim is representative for purposes of invalidity under 35 U.S.C. § 101. This case is discussed in further detail below.

In GREE, Inc. v. Supercell Oy, Judge Payne entered a Report and Recommendation recommending that Supercell's Section 101 Motion to Dismiss be denied because Supercell had failed to meet its burden to show that the Asserted Patents were directed to an abstract idea. Case No. 2:19-cv-00161-JRG-RSP, 2019 WL 7790439, at *3 (E.D. Tex. Dec. 6, 2019). Supercell filed an Objection, arguing that Judge Payne erred in his recommendation. GREE, Inc. v. Supercell Oy, Case No. 2:19-cv-00161-JRG-RSP, 2020 WL 475443, at *1 (E.D. Tex. Jan. 29, 2020). Although Judge Gilstrap determined that "Supercell's Objection is without merit for the reasons stated within the R&R," Judge Gilstrap's Order focused on "an independent basis for adopting the Magistrate Judge's R&R." Id.  Namely, Judge Gilstrap independently found that Supercell had failed to meet its burden to show that the claims discussed in its Motion to Dismiss are representative of the remaining claims in the Asserted Patents. Id.

GREE alleged that Supercell infringed U.S. Patent Nos. 10,286,318 and 10,279,262. Id. Although the '318 Patent has 13 claims, three of which are independent, and the '262 Patent has 24 claims, four of which are independent, Supercell asked the Court to invalidate every claim of the Asserted Patents, as lacking patent-eligible subject matter, based on an analysis of only the first claim in each of the Asserted Patents. Id.

The Court explained that "[e]ach claim in a patent is presumed independently valid." Id. As such, "when a defendant seeks to invalidate multiple claims based only on allegations relating to a subset of those claims, the defendant must justify treating that subset as representative of the other claims." Id. (quoting PPS Data, LLC v. Jack Henry & Assocs., Inc., 404 F. Supp. 3d 1021, 1030 (E.D. Tex. 2019)). The Court cautioned, however, that "'a claim is not representative merely because it generally deals with the same subject matter as the other asserted claims' or 'simply because it is an independent claim' from which other claims depend." Id.  The Court also warned that, generally, "claims in one patent will not represent claims in another patent because patents must contain distinct inventions." Id. Thus, to meet its burden of showing representativeness, "'the defendant must conduct an analysis tethered to the claim language' of each claim for which a determination of invalidity is sought, and must demonstrate 'that there are no legally relevant distinctions between the claims identified as representative and the remaining asserted claims.'" Id. (quoting PPS Data, 404 F. Supp. 3d at 1030–31).

The Court further explained, "When a defendant meets its initial burden and has proven a prima facie case demonstrating representativeness, the burden shifts to the plaintiff to identify limitations that are present in the asserted claims but that are not represented by the allegedly representative claim.'" Id. at *2 (quoting PPS Data, 404 F. Supp. 3d at 1031–32). Yet, "[i]f the plaintiff identifies legally distinctive limitations, then any claims which contain those limitations are excluded from the scope of the relief sought by the defendant and must be distinctively addressed, typically in supplemental motion practice." Id. (quoting PPS Data, 404 F. Supp. 3d at 1032).

The Court found that Supercell's Motion to Dismiss failed to adequately address the issue of representativeness, as the Motion did not explain "why either claim is representative, which claims are represented thereby, or how the Court could conclude that 'there are no legally relevant distinctions' between the two claims Supercell discusses and the remaining thirty-five claims."  Id. However, Supercell argued that GREE had admitted in its Complaint that the Allegedly Representative Claims were representative for all purposes. Id. The Court disagreed.

Judge Gilstrap acknowledged that GREE's Complaint discusses representativeness, but noted that such discussion was exclusively in the context of its infringement allegations. Id. Specifically, the Court found that "the Complaint indicates that the Allegedly Representative Claims are representative of GREE's infringement theories with regard to the manner in which Supercell's products allegedly infringe." Id. The Court concluded that "the Complaint cannot be fairly read to say that the Allegedly Representative Claims are representative in any context or for all purposes." Id.

The Court noted its earlier recognition that "distinctions which are legally relevant to an indefiniteness challenge—but irrelevant to a subject-matter eligibility challenge—will not preclude the court from relying on a representative claim in the eligibility context."  Accordingly, a claim which may be representative in context of one dispute may not be representative in context of another." Id. (quoting PPS Data, 404 F. Supp. 3d at 1031 n.5). Thus, the Court held that "[a] statement that a claim is representative for purposes of infringement without more is insufficient to show that a claim is representative for purposes of invalidity under 35 U.S.C. § 101." Id. at *3. Judge Gilstrap explained that "[t]his is because the representativeness inquiry with respect to infringement is different and distinct from the inquiry with respect to validity under 35 U.S.C. § 101. Id. In other words, "[a]n infringement analysis compares the asserted claims to an accused product or method, and focuses on whether the accused product or method meets each limitation of the asserted claims," whereas, "the eligibility comparison is between the claims and the prior art." Id.

The Court concluded that, "[o]ther than claiming that GREE's statement extends beyond infringement, Supercell makes no argument that there is a basis to find the two claims discussed are representative for purposes of patent-eligible subject matter." Id. Accordingly, Supercell "failed to demonstrate that the Allegedly Representative Claims are appropriately representative for purposes of evaluating the eligibility of the remaining thirty-five claims in the Asserted Patents." Id.

Author: Lance Wyatt