D. Mass. Patent Litigation Update: November 2024

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

In Hybir, Inc. v. Veeam Software Corp., No. 1:20-cv-10329, Judge Talwani granted Defendant’s motion to dismiss.

The asserted patent is directed to a more efficient method and system of file backup in terms of processing time, network bandwidth, and storage requirements. Defendant moved to dismiss for failure to state a claim, contending the asserted patent is invalid under 35 U.S.C. § 101 for claiming unpatentable subject matter.

The Court analyzed the claims under the Alice framework: (1) whether the claims are directed to an abstract idea and (2) if so, whether the claims contain an inventive concept.

Under Alice Step One, Defendant argued the asserted claims were indistinguishable from manual operations performed by individuals, failed to provide a technological solution, and thus were directed to an abstract idea. Plaintiff attempted to differentiate its claims from Federal Circuit precedent that held similar claims to be abstract. Plaintiff argued its claims were limited to the specific environment of backup systems and, as a whole, were non-abstract. The Court disagreed, finding that the claims use an algorithm to generate a list of descriptors for electronic data files stored on a computer, compare those descriptors to another list of descriptors stored elsewhere, and take appropriate action based on the comparison. As such, the Court found that the generation of a content-based identifier (i.e., a descriptor) with an algorithm is an abstract idea.

Under Alice Step Two, Defendant argued the asserted claims merely implement the abstract idea using a generic computer. Plaintiff argued the claims describe specific and tangible components. The Court disagreed with Defendant and found that the claims do not require the use of any specific technology, and observed that the specification expressly states that the claims “can be readily implemented in hardware and/or software using any known or later developed systems or structures, devices and/or software by those of ordinary skill in the applicable art.” Because adding generic computer functionality does not confer an inventive concept on the claimed abstract idea, the Court found the asserted patent also fails under Step Two.

Plaintiff’s final argument was that it pled sufficient facts to show a genuine dispute of material fact, making disposition at the motion to dismiss stage improper. The Court disagreed, finding that Plaintiff only described various sections of the asserted patent without identifying how its assertions allegedly created a dispute. Finally, the Court noted it had reviewed the Parties’ claim construction briefs and found no dispute to preclude dismissal at this stage of litigation.

In biomodal Limited et al. v. New England Biolabs, Inc., No. 1:24-cv-11697, Judge Stearns resolved Plaintiffs’ motion for preliminary injunction and Defendant’s motion to dismiss on the basis of unpatentable subject matter.

First, the Court granted-in-part Defendant’s motion to dismiss for lack of patentable subject matter. Under Alice Step One, the Court found that three asserted patents were directed to the natural process of applying enzymes found in nature to nucleic acids/nucleotides to achieve particular results. Under Alice Step Two, the Court found that because the claims do no more than recite a natural process they contain no inventive concept. With respect to two remaining patents, the Court identified sufficient factual matter in Plaintiffs’ complaint that precluded dismissal on the issue of patent-eligible subject matter. The Court thus granted-in-part Defendant’s motion to dismiss.

Last, the Court denied Plaintiffs’ request for a preliminary injunction noting that the Supreme Court recently reiterated that such relief should be “extraordinary and rare.” The Court explained that a preliminary injunction requires an affirmative showing of (i) likelihood of success on the merits; (ii) irreparable harm; (iii) equities favoring the movant; and (iv) the injunction serves the public interest. The Court found that Plaintiffs had not shown a likelihood of success in view of the Court’s invalidation of multiple asserted patents and the failure to rebut additional validity arguments. The Court noted that preliminary injunctive relief is not appropriate where an accused infringer has raised a substantial question of invalidity, and further expressed doubt that irreparable harm could exist given the availability of money damages. Accordingly, the Court denied Plaintiffs’ request for a preliminary injunction.