In one of the first post-Berkheimer decisions to invalidate patent claims on the pleadings, Judge Yvonne Gonzalez Rogers invalidated thirty-seven claims across four patents asserted in fourteen cases filed by Cellspin Soft, Inc. because the claims were patent-ineligible.  Her order makes clear that an invention’s benefits must be disclosed in the patent specification, and not just advocated by the party enforcing the patent.  While some initially saw the February 2018 Berkheimer decision from the Federal Circuit as a death knell for Rule 12(b)(6) motions under Section 101, Judge Gonzalez Rogers’ order demonstrates how courts and infringement defendants may use a broad patent specification’s failure to describe the claimed invention’s purported improvements and benefits to invalidate it at the pleadings stage.[1]

Case Background and Asserted Patents.  On October 16, 2017, Plaintiff Cellspin Soft, Inc., filed thirteen lawsuits against popular consumer electronics manufacturers and distributors, including Canon USA, GoPro, Inc., Fitbit, Inc., and NIKE, Inc.  The complaints allege that digital cameras, smart watches, fitness tracking wearables, and other popular devices infringe various claims in U.S. Patent Nos. 8,734,794, 8,892,752, 9,749,847, and 9,258,698.  On December 1, Cellspin Soft filed a fourteenth case against JK Imaging Ltd., a digital camera manufacturer. Continue Reading If It’s Not In The Specification, It Doesn’t Count