District Court Dismisses Infringement Claims Because The Patent Recited A Patent-Ineligible Method For Real-Time Billable Time Tracking On A Computer

• Jurisdiction: United States,Federal
• Law Firm: Akin Gump Strauss Hauer & Feld LLP
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Licensing & Syndication, Patent, Court Procedure, Trials & Appeals & Compensation
• Author: Mr C. Brandon Rash and Brooks J. Kenyon
• Published date: 04 April 2023

Judge Engelmayer in the Southern District of New York recently granted a motion to dismiss the complaint because the patent-in-suit is directed to patent-ineligible subject matter under 35 U.S.C. ' 101. The patent is directed to a method of tracking billable time in real time on a computer. The court found the claims unpatentable because they recite the abstract concept or mental process of timekeeping for compensation and lack an inventive concept.

Realtime Tracker, Inc. v. RELX, Inc., d/b/a LexisNexis, No. 1:21-cv-8815-PAE (S.D.N.Y.).

Plaintiff Realtime Tracker sued RELX (d/b/a LexisNexis) for infringing U.S. Patent No. 8,229,810 based on the Juris Suite Timer software marketed by LexisNexis. The patent is directed to a timekeeping computer method on a task-by-task, real-time basis. Representative claim 29 recites a method for individual billable timekeeping using a computer that detects initiation of a phone call and generates a timekeeper entry box, including entries for a personal code and client identifier, that tracks time on a call-by-call basis.

The court analyzed eligibility using the Supreme Court's two-step Alice framework. In step one, a court determines whether the claims are "directed to a patent-ineligible concept," such as an abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014). If they are, the court proceeds to step two and considers "the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id.

Addressing Alice step one, the court found that the claims recite the abstract concept of timekeeping for compensation. The court likened this concept to other concepts courts have found to reflect abstract ideas, such as intermediated settlement; risk-hedging; task generation in a field entailing recurrent projects; data collection, analysis and storage; and the automated process of sending reminders to clients and receiving responses. The court also recognized that humans have undertaken the task of timekeeping for client benefit for centuries.

Realtime argued that the claims were not directed to any form of recording time and, instead, recited a "specific, structured front end user interface combined with a backend computer functionality." The court disagreed because...