Electronic Arts Secures Early Dismissal of Patent Infringement Suit
On June 2, 2016, the U.S. District Court for the District of Utah granted Electronic Arts Inc.’s motion to dismiss a patent infringement claim brought by White Knuckle Gaming, LLC. White Knuckle Gaming had asserted claims of U.S. Patent No. 8,540,575, which were generally directed to providing updates to sports-themed video games reflecting real-world events, such as uniform changes, athlete appearance and performance updates, and roster changes. Electronic Arts challenged the validity of the patent, arguing that it was directed to an unpatentable abstract idea under 35 U.S.C. § 101.
Until recently, subject-matter eligibility challenges have been somewhat rare under a Motion to Dismiss. General concerns whether an adequate understanding of the underlying technology is reached and whether critical claim terms require rigorous construction may have justified this rarity in certain circumstances. However, this decision confirms that, at least under certain circumstances, a Motion to Dismiss can be a powerful tool to invalidate patent claims early, before substantial resources have been spent in litigation.
At the outset, the Court highlighted the absence of any request for construction of claim terms and the agreement between the parties that claim 1 of the asserted patent was representative of the covered subject matter. Following the framework of the Supreme Court’s Mayo and Alice decisions, the Court concluded that the claims were directed to an abstract idea. The Court identified the abstract idea as “updating software in sports video games.” The patent specification conceded that updating software in sports video games was a longstanding business practice, occurring roughly once per year. The Court identified the claimed improvement as “storing the updated software on a ‘network server,’ and coupling a game machine to the network server that downloads the data.” Accordingly, the Court reasoned that “the Patent claims do nothing more than recite the performance of a long-established business practice—re-writing software to produce an updated version—using a general purpose computer and the internet.”
The Court then held that requiring performance of the software updates to occur over a computer network did not amount to significantly more than the abstract idea. The Court noted that the claimed process and hardware did not improve the functioning of the computer or otherwise involve an improvement in technology. Because the claimed methods merely required performance of a preexisting business practice utilizing generic computer hardware operating as it normally would, the Court found the claims were directed to an ineligible abstract idea and dismissed the claim.
In the appropriate circumstances, moving to dismiss a patent infringement suit on grounds that the claims are directed to ineligible subject matter under 35 U.S.C. § 101 can be a powerful tool to quickly resolve a case at relatively low cost. Although courts may have been somewhat reticent to grant such a motion in the past, the current state of the law and the types of subject matter asserted may lower the hurdles to invalidation. This is particularly the case where there is no significant dispute as to the meaning of claim terms, the claims are all directed to similar subject matter, and the prior art reveals that the patentee has only claimed the straightforward implementation of a preexisting process in a new technological environment.
James C. Watson, Registered Patent Attorney
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