Regents of the University of Minnesota v. LSI Corporation
- Edward Davila
- 5:18-cv-00821
- U.S. District Court · Northern District of California
- 12
In Regents v. LSI, Judge Davila denied LSI’s motion, finding the patent claims were not abstract and could not be ruled ineligible at the pleading stage.
The ruling allowed UMN’s claims 14 and 17 of the ’601 Patent to proceed past LSI’s motion for judgment on the pleadings; it rejected LSI’s request for a ruling that those claims were patent-ineligible under Section 101.
What happened
Regents of the University of Minnesota sued LSI Corporation and others over Patent No. 5,859,601, which concerns a coding method intended to reduce reading errors and increase storage capacity in hard disk drives. LSI asked the court to rule that the patent claims were ineligible under Section 101 of the Patent Act.
The court focused on claims 14 and 17, because an earlier patent-review proceeding had found claim 13 unpatentable. The court determined that, when read in the light most favorable to the university, claims 14 and 17 addressed a technological problem involving noise and data storage rather than merely an abstract mathematical formula.
The court denied LSI’s motion for judgment on the pleadings and did not proceed to the second part of the patent-eligibility test. Judge Edward J. Davila also vacated the scheduled hearing.
The detailed version
- Regents of the University of Minnesota v. LSI Corporation · No. 5:18-cv-00821
- Edward Davila
- Aug. 25, 2023
Background
The Regents of the University of Minnesota (UMN) sued LSI Corporation and Avago Technologies U.S. Inc. over Patent No. 5,859,601, titled “Method and Apparatus for Implementing Maximum Transition Run Codes.” The patent concerns a coding method for hard disk drives. UMN alleged that the method reduces noise and reading errors caused by certain patterns in magnetic data and allows increased storage density.
LSI moved for judgment on the pleadings under Federal Rule of Civil Procedure 12(c), arguing that the asserted patent claims were ineligible under 35 U.S.C. § 101. A Rule 12(c) motion challenges whether the pleadings legally support the opposing party’s claims. The court applies the same standard used for a motion to dismiss for failure to state a claim, accepting the complaint’s factual allegations as true and viewing the pleadings in the nonmoving party’s favor.
While LSI’s motion was pending, the court stayed the case during inter partes review, a patent-review proceeding before the Patent Trial and Appeal Board. After appeals, the Federal Circuit affirmed the finding that claim 13 was unpatentable and the conclusion that claims 14 and 17 had not been shown to be unpatentable. UMN then proceeded only on claims 14 and 17, both of which depend on claim 13.
Patent-Eligibility Analysis
Section 101 generally permits patents for new and useful processes, machines, manufactures, compositions of matter, and improvements. It excludes laws of nature, natural phenomena, and abstract ideas. Under the two-step framework commonly called the Alice test, a court first asks whether the claims are directed to an ineligible concept. If so, it asks whether the claim’s elements, considered individually and together, add enough to make the claim a patent-eligible application.
The court stopped at the first step. It held that LSI had not shown that claims 14 and 17 were patent-ineligible as a matter of law. Although the claims use mathematical formulas and do not expressly mention magnetic storage, the court read them together with the patent specification and the complaint. The court found that the claims use “waveform” language tied to magnetic recording and are directed to reducing errors in magnetic data storage and increasing storage density.
The court therefore determined that the claims were directed to an improvement in computer capabilities and provided a technological solution to a technological problem. It concluded that the claims were not abstract at the first step of the Alice analysis and did not reach the second step.
LSI’s Arguments
The court rejected LSI’s argument that the claims were directed only to an abstract mathematical algorithm. The court stated that the claims concern improvements in storage performance, not the mathematical formula alone.
The court also rejected LSI’s reliance on the prior finding that claim 13 was not novel. It explained that patent eligibility and novelty are separate inquiries: eligibility asks whether a claim is directed to a technological solution, while novelty asks whether prior art disclosed the same solution. The court found the prior patent-review decision irrelevant to the eligibility analysis.
The court further rejected LSI’s argument that the claims preempted all uses of the formula. At the pleading stage, the court construed the allegations in UMN’s favor and found that the claims were limited to magnetic storage media. The court also declined to resolve a factual dispute about whether “simulators” use only abstract simulations or rely on physical waveforms.
Finally, the court rejected LSI’s argument that a person could perform the claims with pen and paper. The court found that the claims, as construed for purposes of the motion, require waveforms associated with magnetic storage media. It also stated that software is not automatically abstract merely because it uses algorithms.
Disposition
The court denied LSI’s motion for judgment on the pleadings. It held that the court could not conclude at the pleading stage that the ’601 Patent was ineligible under Section 101. The court vacated the hearing scheduled for August 31, 2023.
Read the full 12-page opinion on CourtListener, the free public archive maintained by the Free Law Project.