Island Intellectual Property LLC et al v. Deutsche Bank Trust Company Americas et al DC

Island Intellectual Property LLC (Island IP) has suffered a Section 101 setback in the bank deposit campaign it has waged for more than a decade, as the Southern District of New York has just invalidated all five patents asserted in the plaintiff’s last remaining suit under Alice. On May 29, District Judge J. Paul Oetken granted a motion to dismiss filed by defendant StoneCastle Partners, ruling that the five patents at issue are unpatentably directed to abstract ideas: four to the abstract idea of “use of a multibank depository program to stay within insurance limits”, and the fifth to “execution on a computer of a bookkeeping process that could be executed by humans manually”. The decision eliminated all remaining causes of action against StoneCastle that relate to patent infringement and also dismissed a trade secrets claim (though with leave to amend), with the court further declining to exercise supplemental jurisdiction over remaining state law claims.

Reich & Tang has filed six declaratory judgment (DJ) actions against former partner Double Rock Corporation and its subsidiary Island Intellectual Property LLC (Island IP), seeking a judgment that over 50 accounting patents held by Double Rock are invalid under Alice. The lawsuits stem from a dispute over a 2011 licensing agreement between the parties: in May 2015, Reich & Tang informed Double Rock that it would stop making license payments on the patents here at issue because they were purportedly directed to unpatentable subject matter. Double Rock subsequently filed a complaint against Reich & Tang in New York state court, seeking to force the financial services firm to continue making its payments until the patents either expired or were declared invalid.