LITIGATION NOTE: Crowell & Moring Wins Summary Judgment of Invalidity: Asserted Patent Claims an Abstract Idea Known for Thousands of Years

New York – June 3, 2020: For over five years, Palomar Technologies, Inc. (“Palomar”) has been asserting what has now been confirmed to be an invalid patent before the U.S. District Court for the District of Massachusetts. Palomar alleges that MRSI Systems, LLC (“MRSI”) infringes U.S. Patent No. 6,776,327. The claimed method, which Palomar refers to as “double pick,” is directed to “placing an item at a final location more accurately by first moving it to an intermediate location.” While Palomar tried to dress its claimed method up as a manufacturing process, the claims are recited at a high level of generality and abstraction. After five years of costly litigation, the verdict came down on May 28, 2020 by Chief Judge Saylor: a litigation team lead by Brian Paul Gearing, Ph.D. proved by clear and convincing evidence that Palomar’s patent claims subject matter that is not patentable and is therefore invalid under 35 U.S.C. § 101.

Chief Judge Saylor’s ruling comes shortly after another significant win for MRSI. After hearing the first-ever bench trial on IPR estoppel, the Chief Judge held on May 4, 2020 that IPR estoppel does not preclude MRSI from asserting two prior art references not previously asserted in an IPR against Palomar’s patent (see Crowell & Moring Wins First-Ever Bench Trial on IPR Estoppel). As part of his opinion, Chief Judge Saylor took Palomar and its expert to task for using improper hindsight in their analysis. Rejecting Palomar’s hindsight approach, the Court held that “courts should be particularly cautious about accepting a hindsight analysis” in the IPR estoppel context.

More recently, on May 28, 2020, addressing the parties’ cross-motions for summary judgment on the issue of invalidity under 35 U.S.C. § 101, Chief Judge Saylor confirmed that “whether or not the idea is garbed in complex terminology, or used in the extremely sophisticated world of chip manufacture” an abstract idea is still an abstract idea. The decision describes Palomar’s “double pick” process as “so basic that it has been known to human beings for millennia” and is therefore invalid.

Palomar’s argument that the patent was a sophisticated, highly technical improvement in the field of precision assembly and robotics, did not convince the Court. Chief Judge Saylor found that, upon closer inspection, “there is dramatically less to the claimed invention than meets the eye,” and stated that it is recited at such a high level of generality that “if the patent is valid, Palomar owns the rights to a fairly wide swath of human activity,” including activities abounding in daily life, such as a golfer trying to sink a golf ball in the hole, a motorist changing a flat tire, basketball players shooting baskets, a carpenter installing doors and windows, and even a child making a peanut butter and jelly sandwich. Chief Judge Saylor’s decision illustrates that simply couching abstract claims in technological language from the specification does not pass muster under 35 U.S.C. § 101. See MRSI's press release.

MRSI is represented by partner Brian Paul Gearing, Ph.D., counsels Ali Tehrani and Zach Ruby, and associate Michelle Chipetine of Crowell & Moring LLP, and partners Robert R. Lucic, Peter A. Nieves, and James P. Harris, and associate Bryanna K. Devonshire of Sheehan Phinney Bass & Green PA.

The case is Palomar Technologies Inc. v. MRSI Systems LLC, case number 1:18-cv-10236, in the U.S. District Court for the District of Massachusetts.