November 10, 2015
From Law360

by Ryan Davies

An Ohio federal judge ruled Friday that patents issued under new U.S. Patent and Trademark Office guidelines for applying the U.S. Supreme Court's Alice decision can still be invalidated under Alice, finding that recently issued vehicle-tracking patents asserted by MacroPoint against rival FourKites claim only abstract ideas.

According to attorneys for FourKites, the decision may be the first in which a judge invalidated patents that were examined under guidelines that the USPTO issued to examiners in December. The guidelines are aimed at ensuring that the office only issues patents that pass muster under the June 2014 Alice decision, which judges have invoked to invalidate scores of patents.

Four of the five MacroPoint patents that Judge Patricia Gaughan of the Northern District of Ohio invalidated Friday were just issued in June and July and were examined under the guidance. While MacroPoint said that fact should save the patents from FourKites' argument that the patents are invalid under Alice, the judge disagreed.

"Contrary to plaintiff’s argument, the fact that the PTO may have considered Alice-based guidelines before issuing the patents-in-suit does not mandate a finding that the patents are valid," she wrote, granting FourKites' motion to dismiss the suit.

Adam Weiss of Polsinelli PC, an attorney for FourKites, said Monday that the ruling shows that courts have the final say on patent validity post-Alice, regardless of when the patents were issued.

"The crux of it is that, as always, it's the courts that decide the validity of patents under Alice, not the patent office, and this decision reinforces that," he said.

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