Jackson Walker Obtains Dismissal Invalidating Patents Asserted Against Market America


Jackson Walker partner Wasif Qureshi helped secure dismissal of his client Shop MA, Inc. (Market America) in a four-patent infringement case filed by Semantic Search Technologies LLC in the Eastern District of Texas. The dismissal entailed the Court invalidating each of the asserted patents as directed to ineligible subject matter under 35 U.S.C. § 101.

Semantic Search’s suit, filed in July 2016, alleged infringement of U.S. Patent Nos. 8,793,237, 8,880,497, 9,069,860, and 9,378,521. Market America and other defendants responded by filing Rule 12(b)(6) motions to dismiss on the basis that the asserted patents claimed subject matter ineligible for patent protection under § 101. Argument on the motions was heard on February 2, 2017.

At the end of the hearing, Semantic Search raised for the first time that it intended to include dependent claims in its infringement contentions, in view of which the Court later granted leave for Market America and its co-defendants to file supplemental briefing to address whether the initially asserted claims were representative of the later asserted dependent claims. Semantic Search responded by seeking leave to supplement the record with additional evidence and convert the defendants’ Rule 12(b)(6) motions into Rule 56 summary judgment motions. Argument on Semantic Search’s request for leave was heard on August 18, 2017.

On August 21, 2019, the Court denied Semantic Search’s request to supplement the record and granted Market America’s and the other defendants’ motions to dismiss, finding that claims of the asserted patents were directed to an abstract idea and that Semantic Search’s arguments for an inventive concept “lie in the abstract idea itself.”

The case is styled Semantic Search Technologies LLC v. Shop MA, Inc., Case No. 6:16-CV-01068-RWS (E.D. Tex.), and is consolidated in lead Case No. 6:16-CV-01058-RWS.

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Meet Wasif

Wasif Qureshi has over 15 years of experience representing and counseling businesses from start-ups to Fortune 100 and other worldwide companies in various types of IP legal matters, including in over 200 patent litigation matters. His work has been nationally recognized. For example, Managing Intellectual Property describes Wasif as a “[skilled] patent litigator” and selected him to be on its “Outstanding IP Litigator” Shortlist, a recognition received by less than 100 of the top IP litigators in the country and less than 10 in Texas.