The Honorable Judge Kernodle has quickly joined the ranks of the very qualified EDTX jurists presiding over patent cases. Judge Kernodle wasted no time diving into cases and issuing substantive orders. In a recent order issued February 5, 2019, Judge Kernodle denied a Defendant’s Rule 12(b)(6) Motion to Dismiss for Failure to State a Claim involving patent ineligibility under 35 USC § 101. (Case No. 6:18-cv-234-JDK; Teleconference Systems LLC v. Metaswitch Networks Corporation; In the U.S. District Court for the Eastern District of Texas, Tyler Division.)
Defendant argued that Plaintiff’s Amended Complaint should be dismissed because the Amended Complaint claimed ineligible subject matter. The technology at issue involved videoconferencing. Defendant’s Motion argued that Plaintiff’s asserted claims were directed to an abstract idea. Plaintiff argued that the asserted claims are directed to a specific device, not an abstract idea. The Court performed the Alice 2-step analysis and found the claims to be patent eligible under both steps. The Court was persuaded that the asserted claims of the patents were not abstract and that they were directed to a technical solution to a technical problem. Thus the Court denied Defendant’s Motion to Dismiss. Interestingly, the Court dropped a footnote stating that many of the Defendant’s arguments would be appropriately addressed as 35 U.S.C. § 103 obviousness and 35 U.S.C. § 112(f) invalidity arguments, which the Court did not address. No doubt these arguments will come up again in summary judgment motions.