D. Mass. Patent Litigation Update: September 2022

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 Integrated Technology Solutions, LLC v. iRacing.com Motorsport Simulations, LLC, No. 1:21-cv-11477, Judge Talwani granted iRacing’s motion to dismiss, finding that ITS’s patent directed to modifying components of a video game racing track to alter user experience was invalid under 35 U.S.C. § 101. The Court applied the two-step framework laid out by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 573 U.S. 208 (2014), examining first whether the claims at issue are directed to laws of nature, natural phenomena, or abstract ideas, and, second, whether the elements of each claim both individually and as an ordered combination transform the nature of the claim into a patent-eligible application.

Applying Alice Step One, the Court found the claims recite an abstract idea. The Court agreed with iRacing that the asserted patent “does not extend beyond an abstract concept where it does not specify how to perform the purported concepts and is overly broad in its attempt to specify numerous variations on the overarching idea.” The Court further analogized the claims at bar to those considered in Bot M8 LLC v. Sony Corp. of Am., 465 F. Supp. 3d 1013 (N.D. Cal. 2020), finding that in both cases “[t]he specifications provide numerous applications of the claimed process, but fail to detail the ‘how.’” More specifically, the Court found that the asserted patent “invokes the use of unspecified computer technology to run an abstract process of identifying, checking, determining, and modifying” and do not recite specific steps or processes to effectuate the claims.

As to Alice Step Two, the Court rejected ITS’ assertion that whether the claimed steps were in the prior art and are transformative is an issue of fact needing further development of the record. Instead, the Court noted that the asserted patent merely “invoke[s] alterations of virtual worlds and the components therein, and [that] in the setting of a virtual world, none of these components are inventions of ITS.” The Court concluded the claims fail to recite an “ordered combination of claim limitations that transform the abstract idea of [modifiable virtual worlds] into a particular, practical application of [the] abstract idea.”

Accordingly, the Court granted iRacing’s motion to dismiss, finding ITS’ patent invalid as directed to unpatentable subject matter.