September 30, 2019

Dog Tug Toy Withstands Section 101 Challenge (N.D. Illinois)

Holland & Knight Section 101 Blog
Anthony J. Fuga

FYF-JB sued Pet Factory for allegedly infringing a patent related to a tug toy that comprises: at least one gripping member; a central portion; and a noise maker designed to emit a sound when one applies force. The patent explains that "noise makers such as squeak toys are known, however, there is currently no tug toy that emits a sound when at least two pets, or a pet and its owner, pull a tug toy" and a tug toy that emits a sound when it's tugged was needed.

Pet Factory moved to dismiss the complaint, arguing that the asserted patent claims are invalid because they're directed to the natural law of "force and its direction" and that the patent claims "at best simply limit the natural law of force to the particular environment of a tug toy."

The patent owner countered that the claims are directed to an article of manufacture – a tug toy – which happens to use force for its operation, and directed the court to a recent decision from Colorado related to a swing that could move in any direction. In that case, the defendant argued that swings were "nothing more than a millennia old application of a pendulum – a natural phenomenon that cannot be patented." The Colorado court rejected that argument, stating that the inquiry "cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon."

The N.D. Illinois court agreed with the Colorado court's analysis and found that the tug toy is "adapted to transmit force to the central portion . . . The claims thus involve force but are not directed to force itself." When considered as a whole, "simply using the word 'force' does not transform the claims into being directed to a law of nature." The court further noted that Pet Factory's argument is more suited as a question of whether the patent claims are novel in light of the prior art.

Accordingly, at step 1 of the Alice inquiry, the court found that the patent claims are not directed to an abstract idea and denied Pet Factory's motion to dismiss.

Claim 1 of the asserted patent reads:

A tug toy comprising:

at least one gripping member and a central portion, wherein said at least one gripping member is attached to said central portion, and

wherein said central portion further includes a noise maker,

wherein said at least one gripping member is adapted to transmit force to said central portion and

wherein said force comprises a first lateral force directed away from the

central portion in the direction of a first gripping member.

Related Insights