A recent decision by the United States Court of Appeals for the Federal Circuit (CAFC or Federal Circuit) in Mobile Acuity Ltd. v. Blippar Entities1 highlights important questions regarding the use of a representative patent claim when analyzing 35 U.S.C. § 101 subject matter eligibility under the U.S. Supreme Court's familiar Alice/Mayo framework. The opinion outlines the critical role that representative claims play in litigation and reaffirms the district court's discretion to compel a patent owner to present substantive argument against the classification of claims as representative at the earliest pleading stage of the case.
Mobile Acuity sued Blippar for infringement of three claims of each of two of its related patents entitled "Storing Information for Access Using a Captured Image." Blippar filed a motion to dismiss Mobile Acuity's complaint due to the asserted patents claiming patent-ineligible subject matter under 35 U.S.C. § 101. In order to streamline and focus its validity challenge, Blippar contended that one claim in each patent was representative of the entire claim set in each respective patent. Blippar then argued that each of the representative claims is invalid under 35 U.S.C. § 101 when considered using the Alice/Mayo framework required by controlling precedent. If the representative claims are invalid, then all claims of both patents are invalid under Section 101, Blippar urged. The district court analyzed Blippar's motion and granted it.
Mobile Acuity appealed and argued that the district court erred in its reliance on representative claims for its Section 101 analysis. The district court's substantive patent ineligibility ruling was also challenged on appeal. The more interesting aspect of the case, however, is the CAFC's detailed discussion regarding the proper use of a representative claim in a Section 101 analysis, and the procedural mechanics and requirements for doing so.
The Federal Circuit explained that limiting the eligibility analysis under 35 U.S.C. § 101 to representative claims is proper when the claims at issue are "substantially similar and linked to the same" ineligible concept. In addition, the appellate court noted that trial judge has discretion to require the parties to identify proposed representative claims and then present argument on the issue. The CAFC stated that the district court may treat a claim as representative if the patent challenger shows the claims are substantially similar and linked to the same concept and either: (1) the patent owner fails to present any meaningful argument for the distinctive significance of any claim limitations not found in the representative claim; or (2) the parties agree to treat a claim as representative. In this context, "meaningful argument" may be an explanation of why a claim limitation not found in the representative claim has distinctive significance that would have a material impact on the subject matter eligibility analysis, as just an example.
Patent challenger Blippar bore the initial burden to make a prima facie showing that the entire claim set in each respective patent is "substantially similar and linked to the same" ineligible concept. Blippar argued that the other claims' limitations only recite generic computer components or conventional computer activities and are all directed to the same abstract idea of the representative claims.
Blippar having made the requisite prima facie showing, the burden then shifted to Mobile Acuity to present non-frivolous arguments as to why the eligibility of the identified representative claim of each of the patents could not fairly be treated as decisive of the eligibility of all claims in the entire claim set in each patent.
Mobile Acuity should have submitted substantive argument, such as articulating why one of the claim limitations not found in the representative claims had "distinctive significance" that would have a material impact on the eligibility analysis, but did not do so. Instead, patent owner Mobile Acuity only argued that treating claims as representative is "particularly troubling at the pleading stage, since additional asserted claims may be identified during discovery." Such a generalized objection to the procedure itself was held to be insufficient. In fact, by its failure to meet its obligation to make non-frivolous arguments in opposition to the representative claim contention, the Federal Circuit decided that Mobile Acuity had forfeited its right to argue that the claims in the group identified by Blippar are patent eligible even if the representative claim is ultimately found to be ineligible.
The Federal Circuit went on to explain that in the context of a dispute over the representativeness of a claim, the challenger's burden to prove ineligibility at all stages of a case 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. This approach is mandated by the longstanding principle that "[e]ach claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims." 35 U.S.C. § 282.
Because the eligibility findings with respect to representative claims only extend to claims for which they are representative, and correspondingly do not extend to claims they do not represent, it is important for district courts to resolve any disputes over representativeness and clearly state which claims are, and are not, adequately represented by others, the CAFC reminded.
The CAFC ultimately affirmed the district court's procedural and substantive use of Blippar's proposed representative claims, and further affirmed that all asserted claims of Mobile Acuity's patents are invalid under 35 U.S.C. § 101 and, consequently, dismissal of the complaint at the pleading stage was proper.
Footnote
1 ___ F.4th ___, 2024 WL 3659127 (Fed. Cir., Aug. 6, 2024).
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