In the first case analyzing patentable subject matter following the Federal Circuit’s highly anticipated decision in CLS Bank International v. Alice Corporation, Goodwin Procter litigators secured a victory for client NetApp, Inc. when Judge Whyte of the Northern District of California granted summary judgment in their favor. The District Court found that the asserted claims of the patent recited unpatentable subject matter, and failed to set forth an adequate written description of the corresponding structure.
Compression Technology Solutions, LLC (CTS) sued NetApp and several other defendants for patent infringement in the Eastern District of Missouri for U.S. Patent No. 5,414,650, titled “Parsing Information Onto Packets Using Context-Insensitive Parsing Rules Based on Packet Characteristics.” Goodwin successfully argued to have the lawsuit transferred to the Northern District of California, as did co-defendants EMC and Quantum.
NetApp and the co-defendants promptly asked Judge Whyte to entertain an early summary judgment motion, which the court agreed to hear prior to claim construction and discovery. CTS’ patent claims technology for receiving an information stream with input packets, classifying the input packets and parsing the input packets into output packets. Goodwin argued these claims covered nothing more than an “abstract idea” and was thus invalid under 35 U.S.C. § 101 as unpatentable subject matter. As was explained to Judge Whyte, a Morse code operator practices the claimed invention each time she receives a stream of coded information and translates it into letters and words.
Judge Whyte agreed, holding that CTS’ patent “is no more than an abstract idea: all of the claimed limitations can be performed as mental processes; it is more abstract than other patents the Federal Circuit has found impermissibly abstract; and it is so broad that it would inappropriately limit future innovation.” While this finding of unpatentable subject matter disposed of the claims, Judge Whyte further held that two of the claims written in means-plus-function language were invalid because the specification did not have an adequate written description of the corresponding structure.
This is NetApp’s third consecutive victory against CTS’ parent company, Acacia.