Ineligible Subject Matter in One Court Is Still Ineligible in Another
DietGoal Innovations LLC v. Chipotle Mexican Grill, Inc.
Addressing the issue of whether the court was bound by another court’s holding that a patent was invalid for being directed to patent-ineligible subject matter, the U.S. District Court for the Eastern District of Texas granted summary judgment of invalidity, determining that collateral estoppel made the asserted patent’s invalidity a foregone conclusion. DietGoal Innovations LLC v. Chipotle Mexican Grill, Inc., Case No. 2:12-cv-764-WCB-RSP (E.D. Tex., Oct. 3, 2014) (Bryson, J., sitting by designation).
DietGoal’s patent related to computerized meal planning. The invention included a computer display that showed food that the user could organize into meals. As the user changed the food in the meal, the computer would show how those food choices related to the user’s eating goals. For example, a user could decide whether to eat a hamburger or a chicken sandwich. The computer display would then show how that decision affected the user’s goals for caloric intake.
Another court had previously found that DietGoal’s patent was directed to patent-ineligible subject matter. That determination was made on summary judgment in a case between DietGoal and an unrelated third party. In the instant case, DietGoal faced a similar summary jublakdgment motion, and the court considered the collateral estoppel effect of the prior ruling.
Although the prior decision had already determined the patent to be invalid, DietGoal argued here that collateral estoppel did not apply because DietGoal had been unable to fully litigate the issue. According to DietGoal, the prior court had “failed to grasp” the technical subject matter of the patent. DietGoal argued that the prior court’s decision was flawed because it did not construe any claim terms. Judge Bryson rejected this argument, noting that DietGoal had failed to specify how construing the claims would have changed the invalidity analysis.
DietGoal also argued that the prior court showed a fundamental misunderstanding of the patent. The prior court had reasoned that the invention could be performed by a human mind using a pen and paper and was therefore directed to ineligible subject matter. DietGoal argued that the invention could not be performed in a human mind because the patent required interaction between a user and a computer screen. Judge Bryson disagreed, concluding that prior court understood the technology well enough, and that DietGoal simply disagreed with the decision. Judge Bryson noted that there is a narrow exception where collateral estoppel may not apply, i.e., instances in which a court fails demonstrably to understand the technology, but that exception does not cover situations where the patentee simply disagrees with a court’s reasoning.