Intellectual Property > IP Newsflash > Texas Court Defers Alice Determination until After Claim Construction
26 Jan '16

An Eastern District of Texas judge denied Defendants’ motion for judgment on the pleadings that the asserted claims are invalid under Alice concluding the decision here is best left until after claim construction. The claims at issue relate to processing coupons. Defendants contend the asserted claims should be invalidated because they are directed to the abstract idea of ‘offering, tracking, and processing discounts’—a concept Defendants contend is a longstanding commercial practice.” Id. at 5. Defendants also argued that the discount vehicle claims are invalid under the printed matter doctrine because the claim term “discount vehicle” can only be interpreted as paper with certain text and/or graphics printed on it. Plaintiff responded that making a decision at this stage is inappropriate because there exists underlying factual disputes concerning the scope of the claims. Specifically, Plaintiff argued that “discount vehicle” is not limited to a sheet or card as interpreted by Defendants.

Based on the parties’ disagreement as to the scope of the asserted claims, the court determined that more analysis regarding the interpretation of the claims is needed to resolve this issue. The court also concluded that the asserted claims do not clearly show that they recite an abstract idea because the claims include physical structures. Thus, the court denied Defendants’ motion without prejudice to re-file a similar motion after claim construction.

Advanced Marketing Sys, LLC v. CVS Pharmacy, C.A. No. 6:15-cv-134 (E.D. Tex. Jan. 25, 2016) (Gilstrap, J.).