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District Court Denies Motion to Dismiss under Section 101 Even Though Two Other District Courts Had Founds Patents Ineligible

In this patent infringement action, the Defendants filed motions for partial summary judgment of invalidity with respect to two of the patents at issue in the case. The defendants argued that two district courts had already found the two patents at issue in the case patent ineligible under section 101 of the Patent Act.

The defendants argued that decisions from the Western District of Pennsylvania and the District of Maryland preclude re-litigation of that issue in the current case entitled defendants to summary judgment as a matter of law on those two patents. See Intellectual Ventures I LLC v. Old Republic Gen. Ins. Grp., Inc., No. 2:14-cv-01130 (W.D. Pa. Sept. 25, 2015); Intellectual Ventures II LLC v. Capital One Financial Corp. et al., No. 8:14-cv-00111 (D. Md. Sept. 2, 2015).

The district court was not persuaded. First, the district court noted that “[t]he cases have been consolidated for appeal to the Federal Circuit. Intellectual Ventures I v. Capital One Financial Corp., No. 16-1077 (Fed. Cir., appeal docketed Oct. 15, 2015). There is no point in dismissing these claims, when the patents may yet be held to cover eligible material.”

Second, the district court denied the request to stay the case pending the appeal. “The parties’ requested stay of the litigation related to these patents is also denied. The issues are before me, and if the defendants feel the District Courts that considered the 35 U.S.C. ยง 101 issue decided correctly, they may, by proper motion, seek to persuade me along the same lines.”

Accordingly, the district court denied the motion and permitted the case to proceed.

Intellectual Ventures v. Citigroup, Inc., Case No. 14-cv-4638 (AKH) (S.D.N.Y. Jan. 19, 2016)

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