An East Texas federal judge Tuesday dismissed a patent infringement lawsuit that concerns the technology for checking visitors into access-controlled environments such as hospitals and office buildings.
Ten months in, the case was still in its infancy when U.S. District Judge Sean Jordan of the Eastern District of Texas dismissed it and invalidated the patent at issue under Section 101 grounds, which lawyers involved say is a rare occurrence for patent cases filed in the Eastern District of Texas.
“One way that the court has encouraged patent holders to file in the Eastern District of Texas has historically been by not granting motions to dismiss or granting them late in the case once significant discovery has occurred,” said Munck Wilson Mandala partner Chad Ray, a lawyer for the prevailing defendant, Intellicentrics. “The outcome here flips that script, because Judge Jordan granted the motion early in the case before even deciding claim construction issues (notably, no claim construction issues were raised in the motion to dismiss briefing).
“This could signal a change in the Eastern District of Texas’ approach to patent litigation, at least in Judge Jordan’s court,” Ray added.
The lawyers for the plaintiff, Repifi Vendor Logistics, did not respond to a request for comment.
Repifi is the owner of Patent No. 10,304,268, which utilizes smartphone technology to streamline the process of granting visitor credentials and checking in/checking out said visitors of office buildings, hospitals and other access-controlled environments. Denver, Colorado-based Repifi sued Intellicentrics last June alleging the Flower Mound-based IT company infringed on claim 1 of the ‘268 patent by implementing a similar smartphone method for visitors of healthcare facilities.
Intellicentrics moved to dismiss the case in August, arguing that Repifi’s patent was invalid. Intellicentrics argued that Repifi had failed to claim patentable subject matter in its lawsuit because the claim at issue was an abstract idea, which the U.S. Supreme Court has long held is not patentable under Section 101 of federal law. Judge Jordan heard more from the parties at a hearing in November.
On Tuesday, the judge agreed with Intellicentrics that Patent ‘268’s claim 1 — the only claim brought up so far in the case — was an abstract idea. He dismissed the suit without prejudice, which still leaves the possibility that Repifi could refile its lawsuit and assert infringement of different claims of the ‘268 patent, the defense team said.
“Credentialing and checking in visitors is a process that long predates the ‘268 patent,” Judge Jordan wrote in his ruling. “It has been practiced ever since access-controlled facilities have existed. It is also a well-established business practice and a common method for organizing human activity.
“The elements of claim 1 clearly delineate a method of accomplishing this longstanding human activity,” the judge wrote. “The fact that claim 1 implements existing technology such as smart phones and electronic badges to make the process more efficient does not save claim 1 from targeting an abstract concept. Claim 1 merely applies existing technology to automate a human process. Nothing in claim 1 indicates that it is directed to an improvement to the technology itself.”
Munck Wilson partner Mike Wilson, Intellicentrics’ lead attorney, said the ruling is important because it “confirms that Intellicentrics’ technology is not infringing any valid patent of Repifi.
“Intellicentrics respects the intellectual property rights of other companies,” he said.
The Dallas-based Munck Wilson team representing Intellicentrics also included partner Greg Howison and associates Chase Cobern and Will Howison.
Repifi’s lead lawyers, who are based in Delaware and Philadelphia, are Offit Kurman attorneys Touhey Myer and Michael Hogan. The plaintiff’s local counsel is Houston attorney Keith Jaasma of Ewing & Jones.
The case is 4:20-cv-00448-SDJ in the Sherman division of the U.S. District Court for the f Texas.