VeriPath, Inc. v. Didomi
- George Daniels
- 1:19-cv-01702
- U.S. District Court · Southern District of New York
- 10
In VeriPath v. Didomi, Judge Daniels granted Didomi’s motion to dismiss, ruling the patent claims ineligible under Section 101.
VeriPath, Inc.’s patent-infringement claims against Didomi were dismissed through the granted motion to dismiss.
What happened
VeriPath, Inc. sued Didomi for allegedly infringing a patent about obtaining users’ permission to share personal information in exchange for enhanced application features.
Didomi argued that claim 1 of the patent covered an abstract idea and therefore could not be patented. VeriPath argued that the patent provided a specific technological improvement for managing privacy permissions and data sharing.
Judge George B. Daniels granted Didomi’s motion to dismiss. He ruled that claim 1 described exchanging privacy for functionality using a routine application programming interface, and that the dependent claims did not add enough to make the invention patent-eligible.
The detailed version
- VeriPath, Inc. v. Didomi · No. 1:19-cv-01702
- George Daniels
- Mar. 30, 2020
Background
VeriPath, Inc. brought a patent-infringement action against Didomi under the Patent Act, alleging infringement of U.S. Patent No. 10,075,451. The patent, titled “Methods and Systems for User Opt-in to Data Privacy Agreements,” concerns controlling access to a user’s personal information by obtaining permission to use that information in exchange for enhanced application functions.
Claim 1 describes providing a software component with an application programming interface, or API; obtaining the user’s personal information through that component; identifying the type of information; determining what permission is required for a proposed use; offering an enhanced application function in exchange for that permission; and providing the function after the user grants permission.
Didomi moved to dismiss the amended complaint under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal when a complaint does not state a legally sufficient claim. Didomi specifically argued that claim 1 was not eligible for patent protection under 35 U.S.C. § 101.
The Court’s Analysis
The court applied the two-step framework for determining whether a patent claim is directed to an ineligible abstract idea. First, it asks whether the claim is directed to an abstract idea or another category that cannot be patented. If so, it asks whether the claim contains an “inventive concept” that transforms the abstract idea into a patent-eligible invention.
At the first step, the court characterized claim 1 as directed to the abstract idea of exchanging privacy for functionality. In the court’s view, the claim used the API as a tool but did not improve the functioning of the computer or computer network itself. The court also concluded that the claim did not provide a sufficiently specific method for improving computer functionality.
At the second step, the court found that the claim’s steps were high-level descriptions of the same abstract exchange. The use of a generic computer or API did not add an inventive concept sufficient to make the claim patent-eligible.
The court also addressed the dependent claims. It concluded that claims 2, 3, 8, 9, 11, 12, 14, and 16, to the extent VeriPath asserted them, were substantially similar to claim 1 and likewise concerned the abstract idea of exchanging privacy for functionality. The court ruled that those claims did not add enough to transform the invention into patent-eligible subject matter.
Disposition
Judge George B. Daniels granted Didomi’s motion to dismiss. The order directed the Clerk of Court to close the motion.
Read the full 10-page opinion on CourtListener, the free public archive maintained by the Free Law Project.