A federal court in Pittsburgh, Pennsylvania ordered the dismissal of Intellectual Ventures' patent infringement action against Highmark Inc. and other health insurance companies who allegedly infringed patents related to databases on the grounds they are ineligible subject matter for patentability under the Supreme Court’s Alice decision.

This case involves U.S. Patent No. 6,519,581 B1, entitled “Collection of Information Regarding a Device or a User of a Device Across a Communication Link;” U.S. Patent No. 6,546,002 B1, entitled “System and Method for Implementing an Intelligent and Mobile Menu-Interface Agent;” U.S. Patent No. 6,510,434 B1, entitled “System and Method for Retrieving Information From a Database Using an Index of XML Tags and Metafiles;” and U. S. Patent No. 7,757,298, entitled “Method and Apparatus for Identifying and Characterizing Errant Electronic Files.”

Intellectual Ventures I and Intellectual Ventures II brought the infringement action against Highmark Inc., Erie Indemnity and Old Republic General Insurance Co. in August 2014.

U.S. District Judge Mark Hornak on Sept. 25 granted the insurers’ motion to dismiss the claims as to the '581 Patent without prejudice for lack of subject matter jurisdiction, and also granted defendants' motion to dismiss based on patent ineligibility as to the '434 Patent with
prejudice.

Moreover, Judge Hornak said if the court had concluded that it had jurisdiction as to the '581 Patent, it would also have granted the motions to dismiss on patent ineligibility grounds with prejudice.

Finally, Judge Hornak also granted the Old Republic defendants' motion to dismiss as to the '434 Patent and the '002 Patent with prejudice. “Because the Court concludes the '002 Patent is not directed to patent eligible subject matter, claims based on infringement of it against the Erie and Highmark Defendants must also dismissed with prejudice.”

Officials from Intellectual Ventures couldn’t be reached immediately for comment.

Robert Cutler, a partner with the Nix Law Firm, who represented IV, couldn’t be reached immediately for comment.

Leslie Pearlson, a partner with WilmerHale, who represented Highmark, also couldn’t be immediately reached.

—To reach the reporter responsible for this story please contact Dan Lonkevich at 707 318-7899 or at dan@thepatentinvestor.com