Tech. Dev. & Licensing, LLC v. General Instr. Corp., No. 07 C 4512, Slip Op. (N.D. Ill. Dec. 6, 2016) (Lefkow, J.).
Judge Lefkow granted defendant GI’s motion for summary judgment of invalidity based upon 35 U.S.C. §101 and denied as moot GI’s motion to exclude plaintiff TD&L’s expert’s opinions in this patent dispute related to a “television control system for choosing a channel based upon a preassigned channel tuning designation.”
As an initial matter, GI was not precluded from raising its §101 invalidity argument, even though it first made the argument after discovery. First, the Local Patent Rules did not expressly require disclosure of §101 arguments in final invalidity contentions and the decisions from other districts relying upon local patent rule disclosures were based upon explicit requirements in those rules. Additionally, TD&L was not prejudiced by the late argument because it was a legal argument that could be made on the pleadings. So, no factual discovery was necessary to support or dispute it. And TD&L’s contention interrogatory arguably requesting identification of the argument was “poorly written” and it was not clear from the interrogatory whether information regarding §101 arguments was sought.
TD&L’s patent used a microchip to implement the conventional activity of making multiple lists of television channels and storing them to be used later as an alternative to using a full channel guide.
Having held that the patent was directed to an abstract idea, the Court considered whether there was an inventive concept in the claims that made the claims patentable. The Court did not find any inventive concept that overcame the abstract idea. The inventor did not claim that the invention related to electronic circuitry or microprocessors. The patent specification acknowledged that television service providers make available various channel listings to consumers. And the claims use procedures and conventional hardware pre-dating the patent’s filing date.