In a possible case of first impression, a court found enforcement of a continuation patent was not barred by claim preclusion when a related parent patent had been found invalid under Section 101.  VideoShare, LLC v. Google LLC et al., WDTX 6-19-cv-00663, Order, May 4, 2020.   The ruling by Judge Albright in the influential Western District of Texas came in a denial of a Rule12(b)(6) motion to dismiss based on claim preclusion.   The court noted unlike determinations of novelty and obviousness under Sections 102 and 103, patent eligibility “does not concern the scope of patent’s claims. It only concerns whether or not the patent claims are directed to patent-eligible subject matter.”  One element of claim preclusion is whether or not two patents have the same scope.  Id. at p. 13.  The Court believed the nature of determining patent eligibility and the Alice two-step test lacks a claim scope determination.   The first step of Alice requires evaluating whether claims were directed to a patent ineligible concept not claim scope.  The second step of Alice assesses whether there is significantly more than an ineligible concept, that is, an inventive concept that transforms the ineligible claimed concept into a patent-eligible application.   Judge Albright found neither of these tests made for the first parent patent would give rise to a claim preclusion against a second continuation patent even when the second patent was subject to a terminal disclaimer with respect to the first patent and may have related, narrower claims than the first patent.


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