October 28, 2019

D. Utah: Cellspin Not Section 101 Intervening Law

Holland & Knight Section 101 Blog
Anthony J. Fuga
Protecting Patent Clients in Alice's Wonderland

This summer, the District of Utah dismissed Simio’s lawsuit against Flexsim Software, finding that the asserted patent was not patent eligible under Section 101. Simio responded by asking the court to vacate its judgment or, alternatively, allow Simio leave to file an amended complaint based on the Federal Circuit’s Cellspin v. Fitbit decision. Simio argued that new factual allegations in its proposed amended complaint ought to prevent the court from dismissing the case. The court disagreed with Simio.

The court first noted that while it could allow Simio to amend its complaint, an amendment could not “transform the deficient patent claim from one drawn to an ineligible software system to one directed toward an eligible machine.”

The court then addressed Simio’s argument that, pursuant to the Federal Circuit’s recent Cellspin decision, factual allegations in the amended complaint preclude dismissal at the pleading stage. The court again disagreed. “The Federal Circuit made clear that its decision should not be interpreted to mean that any allegation about inventiveness, wholly divorced from the claims or the specification, defeats a motion to dismiss automatically ... Simio’s allegations of inventiveness are simply not plausible.”

Finally, the court disagreed with Simio’s description of Cellspin as an intervening change in the law. "Cellspin merely reiterates established principles from Berkheimer and Aatrix that plausible and specific factual allegations that aspects of the claims are inventive are sufficient at the pleading stage; it does not mean that any allegation about inventiveness defeats a motion to dismiss."

For these reasons, the court found that any amendment to Simio’s complaint would be futile, found that there was no basis to vacate its previous judgment, and denied Simio’s motion for leave to amend its complaint.

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