Juniper Networks Inc. v. Swarm Technology LLC

Background

Juniper Networks Inc. and its wholly owned subsidiary, Apstra, Inc., sought a declaration that they did not infringe Swarm Technology LLC’s U.S. Patent Nos. 9,146,777, 9,852,004, and 10,592,275. Swarm, the patent owner, filed counterclaims alleging infringement of all three patents. Juniper moved to dismiss the counterclaims under 35 U.S.C. § 101 and the two-part framework from Alice Corp. v. CLS Bank International, which asks whether patent claims are directed to an ineligible concept and, if so, whether they contain an inventive concept sufficient to make them patent-eligible.

The ’004 and ’275 patents

The court noted that a District of Arizona court had dismissed Swarm’s infringement claims involving the ’004 and ’275 patents. That decision was not yet final, so collateral estoppel—an issue-preclusion doctrine that can prevent relitigating an issue already decided—did not technically apply. Still, the court concluded that Swarm should pursue amendment, reconsideration, or an appeal in the Arizona proceedings rather than ask this court to disregard the Arizona order. The court therefore dismissed the counterclaims based on the ’004 and ’275 patents without prejudice. It stated that Swarm could request permission to re-allege those claims if later developments in the Arizona proceedings or an appeal warranted it.

The ’777 patent

The court treated Claim 1 as representative of the ’777 patent’s claims. The claim described a computer system with a central processing unit, a task pool, and a “solidarity cell” that proactively retrieved a matching task from the pool. Applying the Alice framework, the court held that the claim was directed to the abstract idea of retrieving and completing tasks from a task pool. The court compared that process to human project-management practices, including workers selecting tasks from a shared pool and seeking additional tasks without direction from a manager.

The court also held that Claim 1 lacked an inventive concept. In its view, the claim recited ordinary steps performed in a conventional order on conventional computer technology. Swarm’s counterclaims alleged in conclusory terms that the claim elements were not well-understood, routine, or conventional, but did not provide specific factual support. The court concluded that those allegations were insufficient to prevent resolving patent eligibility on a motion to dismiss.

Disposition

The court dismissed the counterclaims under Section 101. The counterclaims based on the ’004 and ’275 patents were dismissed without prejudice. The counterclaims based on the ’777 patent were dismissed, and Swarm was allowed to file amended counterclaims by August 15, 2022. The order states that failure to meet that deadline would result in dismissal with prejudice under Federal Rule of Civil Procedure 41(b). Judge James Donato signed the order.