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District Court Denies Section 101 Challenge to Patent Validity Where Claims Described a Specialized System

Defendant Murphy USA Inc. (“Murphy”) filed a motion for summary judgment of invalidity as to certain claim U.S. Patent No. 6,076,071 (“the ‘071 Patent”) and one claim of U.S. Patent No. 6,513,016 (“the ‘016 Patent”) on the grounds that the patents are directed to non-patentable subject matter under 35 U.S.C § 101. In its motion, Murphy contended that “[t]he Asserted Claims, directed to an ‘automated product pricing system,’ cover nothing more than the abstract idea of changing prices from a central location using known electronic components, and are not patent-eligible under § 101.” Murphy also presented a chart of one of the claims to demonstrate why each discrete claimed “principle” is purportedly accomplished in a conventional manner.

The district court began its analysis by noting that”[p]atent claims enjoy a presumption of validity. 35 U.S.C. § 282. Beyond listing the claimed elements in a column entitled ‘Abstract Commercial Principle,’ Defendant has failed to articulate convincingly why it believes the ‘automated product pricing system’ of the Asserted Claims is considered abstract under the law. By evaluating Claim 24 of the ‘071 Patent as a whole, the court concludes the Asserted Claims are not abstract under the law.”

After reciting the language of Claim 24, the district court found that “Claim 24 is directed to physical systems for controlling the display and management of product prices in physical stores, utilizing specific types of electronic devices that are networked together to operate in a very specific manner. This system of interconnected physical devices–implemented in a specialized manner to control the display and management of product prices–stands in stark contrast to the recitation of a general computer performing generic computer functions in relation to an abstract concept (such as, for example, a scheme for mitigating settlement risk) as set forth in Alice. See Alice, 135 S. Ct. at 2359 (‘In short, each step does no more than require a generic computer to perform generic computer functions.’).”

The district court also rejected Murphy’s argument that the Asserted Claims are directed to nothing more “than the abstract idea of changing prices from a central location” using conventional hardware, reminding Murphy that “[a]t some level, ‘all inventions . . . embody, use, reflect, [or] rest upon . . . abstract ideas.'”) Alice, 135 S. Ct. at 2354 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012)). In other words, “an invention is not rendered ineligible for [a] patent simply because it involves an abstract concept.” Id. (citing Diamond v. Diehr, 450 U.S. 175, 178 (1981)).

The district court then concluded that “[t]he unique manner in which the Asserted Claims describe a specialized system for controlling, displaying, and managing products sufficiently recites subject matter eligible for a patent. To find otherwise would run afoul of the Supreme Court’s cautionary counsel regarding patent ineligibility.” See, e.g., id. (“[W]e tread carefully in construing this exclusory principle lest it swallow all of patent law.”) (citing Mayo, 132 S. Ct. at 1293-94)).

Accordingly, the district court denied the motion and “[b]ecause the Court finds the Asserted Claims recite non-abstract, patent-eligible subject matter, Defendant’s remaining arguments as to whether the Asserted Claims meet section 101 necessarily fail. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713-14 (‘First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If not, the claims pass muster under § 101.’ (Internal citations omitted.).”

Freeny v. Murphy Oil Corp., Case No. 2:13-CV-791-RSP (E.D. Tex. May 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or