Case 1:17-cv-01399-RGA Document 17 Filed 06/12/18 Page 1 of 9 PageID #: 182
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`IRONWORKS PATENTS, LLC,
`
`Plaintiff,
`
`V.
`
`APPLE INC.,
`
`Defendant.
`
`Civil Action No. 17-1399-RGA
`
`MEMORANDUM OPINION
`
`Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE; David Berten, Alison
`Aubry Richards, Hannah Sadler, GLOBAL IP LAW GROUP, LLC, Chicago IL.
`
`Attorneys for Plaintiff.
`
`David E. Moore, Bindu A. Palapura, Stephanie E. O 'Byme, POTTER ANDERSON &
`CORROON, Wilmington, DE; Xin-Yi Zhou, O 'MELVENY & MYERS LLP, Los Angeles, CA;
`Luann L. Simmons, O' MEL VENY & MYERS LLP, San Francisco, CA.
`
`Attorneys for Defendant.
`
`June \ /', 2018
`
`

`

`Case 1:17-cv-01399-RGA Document 17 Filed 06/12/18 Page 2 of 9 PageID #: 183
`
`~ -~
`
`ANDREWS, U.S. DIST CT JUDGE:
`
`Presently before the Court is Defendant' s Motion to Dismiss for Failure to State a Claim
`
`(D.I. 10) and related briefing (D.I. 11 , 14, 15). For the reasons that follow, the Court will deny
`
`Defendant' s Motion to Dismiss for Failure to State a Claim.
`
`I.
`
`BACKGROUND
`
`Plaintiff filed a patent infringement action on October 6, 2017 against Defendant,
`
`alleging infringement of U.S. Patent Nos. 6,850,150 ('"the ' 150 patent"), 8,847,734 ("the ' 734
`
`patent"), and RE39,231. (D.I. 1).
`
`Plaintiff alleges infringement of claim 1 of the ' 150 patent and claim 1 of the ' 734 patent.
`
`(D.I. 1 at ,r,r 55-77). The claims read as follows:
`
`1. A portable device, comprising:
`
`control means for monitoring and controlling the operation of the device; and
`
`a user interface which comprises alarm means for performing a silent alarm producing a
`silent, invisible, tactile sensation in the user;
`
`wherein the control means are arranged to give the user abstract information on multiple
`internal operational events of the device by using various alarm patterns of silent,
`invisible sensations produced by the alarm means and sensed by the user, the alarm
`patterns differing from one another such that at least one alarm pattern characteristic
`sensed by the user varies, said abstract information comprising a notification of a selected
`item on a menu of the user interface.
`
`(' 150 patent, claim 1).
`
`1. A mobile station comprising:
`
`a user interface configured to enable a user to control operation of the mobile station by
`manual input and to obtain information on the operation of the mobile station,
`
`a tactile alert device configured to generate a tactile vibration, and
`
`a control circuit configured to control the tactile alert device to generate a first tactile
`vibration with a first pattern in response to a first event and a second tactile vibration with
`
`1
`
`

`

`Case 1:17-cv-01399-RGA Document 17 Filed 06/12/18 Page 3 of 9 PageID #: 184
`
`a second pattern that is distinctly humanly perceptibly different from the first pattern in
`response to a second event different from the first event,
`
`wherein one of the events is user entry of an incorrect personal identification number
`code.
`
`(' 734 patent, claim 1).
`
`Defendant argues that the ' 150 and ' 734 patents "claim subject matter ineligible for
`
`patent protection." (D.I. 11 at 1).
`
`II.
`
`LEGALSTANDARD
`
`A. Motion to Dismiss
`
`Rule 8 requires a complainant to provide "a short and plain statement of the claim
`
`showing that the pleader is entitled to relief . ... " Fed. R. Civ. P. 8(a)(2). Rule 12(b)(6) allows
`
`the accused party to bring a motion to dismiss the claim for failing to meet this standard. A Rule
`
`12(b)(6) motion may be granted only if, accepting the well-pleaded allegations in the complaint
`
`as true and viewing them in the light most favorable to the complainant, a court concludes that
`
`those allegations "could not raise a claim of entitlement to relief." Bell Atl. Corp. v. Twombly ,
`
`550 U.S. 544, 558 (2007).
`
`B. Patent-Eligible Subject Matter
`
`Section 101 of the Patent Act defines patent-eligible subject matter. It provides:
`
`"Whoever invents or discovers any new and useful process, machine, manufacture, or
`
`composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,
`
`subject to the conditions and requirements of this title." 35 U.S.C. § 101. The Supreme Court
`
`has recognized an implicit exception for three categories of subject matter not eligible for
`
`patentability-laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. v. CLS
`
`Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). The purpose of these carve outs is to protect the "basic
`
`2
`
`

`

`Case 1:17-cv-01399-RGA Document 17 Filed 06/12/18 Page 4 of 9 PageID #: 185
`
`tools of scientific and technological work." May o Collaborative Servs. v. Prometheus Labs.,
`
`Inc., 566 U.S. 66, 71 (2012). "[A] process is not unpatentable simply because it contains a law
`
`of nature or a mathematical algorithm," as "an application of a law of nature or mathematical
`
`formula to a known structure or process may well be deserving of patent protection." Id.
`
`(emphasis omitted). In order "to transform an unpatentable law of nature into a patent-eligible
`
`application of such a law, one must do more than simply state the law of nature while adding the
`
`words ' apply it. "' Id. at 72 (emphasis omitted).
`
`The Supreme Court recently reaffirmed the framework laid out in May o "for
`
`distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from
`
`those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. First,
`
`the court must determine whether the claims are drawn to a patent-ineligible concept. Id. If the
`
`answer is yes, the court must look to "the elements of the claim both individually and ' as an
`
`ordered combination'" to see if there is an '"inventive concept'-i. e., an element or combination
`
`of elements that is ' sufficient to ensure that the patent in practice amounts to significantly more
`
`than a patent upon the [ineligible concept] itself. "' Id. (alteration in original
`
`Patent eligibility under § 101 is a question oflaw suitable for resolution on a motion to
`
`dismiss. See OIP Techs., Inc. v. Amazon. com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015);
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1346
`
`(Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (2015). The Federal Circuit follows regional circuit
`
`law for motions to dismiss. Content Extraction, 776 F.3d at 1346.
`
`III. DISCUSSION
`
`Plaintiff alleges infringement of claim 1 of the ' 150 patent and claim 1 of the '734 patent.
`
`(D.I. 1 at ,r,r 55-77).
`
`3
`
`

`

`Case 1:17-cv-01399-RGA Document 17 Filed 06/12/18 Page 5 of 9 PageID #: 186
`
`"First, we determine whether the claims at issue are directed to [an abstract idea]." Alice,
`
`134 S. Ct. at 2355. "The 'abstract ideas' category embodies 'the longstanding rule that [a]n idea
`
`of itself is not patentable."' Id. (quoting Gottschalk v. Benson, 409 U.S. 63 , 67 (1972)). "The
`
`Supreme Court has not established a definitive rule to determine what constitutes an 'abstract
`
`idea' sufficient to satisfy the first step of the Mayo/Alice inquiry." En.fish, LLC v. Microsoft
`
`Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016). The Supreme Court has recognized, however, that
`
`"fundamental economic practice[s]," Bilski, 561 U.S. at 611, "method[s] of organizing human
`
`activity," Alice, 134 S. Ct. at 2356, and mathematical algorithms, Benson, 409 U.S. at 64, are
`
`abstract ideas. In navigating the parameters of such categories, courts have generally sought to
`
`"compare claims at issue to those claims already found to be directed to an abstract idea in
`
`previous cases." Enfish, 822 F.3d at 1334. "But in determining whether the claims are directed
`
`to an abstract idea, we must be careful to avoid oversimplifying the claims because '[a]t some
`
`level, all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural
`
`phenomena, or abstract ideas."' In re TLI Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
`
`Cir. 2016) (alterations in original) (quoting Alice, 134 S. Ct. at 2354).
`
`Defendant argues that the asserted claims "fail the first step of the Alice test because they
`
`apply an abstract idea-using a vocabulary to ~onvey information-to the user interface of a
`
`portable electronic device." (D.I. 11 at 7). More specifically, Defendant argues,
`
`The two asserted claims apply the abstract idea . .. in two contexts: (1) conveying
`"abstract information on multiple internal operational events" of a device, such as
`"a notification of a selected item on a menu of the user interface," via different
`"alarm patterns of silent, invisible sensations" (Claim 1 of the' 150 Patent); and (2)
`conveying information regarding multiple "event[s]," such as the "entry of an
`incorrect personal identification number code," via "tactile vibration[ s ]" with
`different "pattern[s]" (Claim 1 of the ' 734 patent).
`
`4
`
`

`

`Case 1:17-cv-01399-RGA Document 17 Filed 06/12/18 Page 6 of 9 PageID #: 187
`
`(D.I. 11 at 7). Defendant notes that the shared specification compares the alleged invention to
`
`the Braille system and explains that the claimed invention is "a kind oflimited application of
`
`Braille system by means of vibration." (Id. (citing ' 150 patent, 2:31-33)).
`
`Defendant argues that the "idea of using a vocabulary to convey information is abstract,"
`
`and cites several Federal Circuit cases to that effect. (D.I. 11 at 8).
`
`However, Plaintiff notes that "[ c ]laims to tangible systems are typically patent eligible.
`
`'
`(D.I. 14 at 9 (citing Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 , 1125
`
`(Fed. Cir. 2018) (finding error in a district court decision where the patentee made "factual
`
`allegations" that, if accepted as true, "establish that the claimed combination contains inventive
`
`components and improves the workings of the computer"); Immersion Corp. v. Fitbit, Inc., 201 8
`
`WL 1156979, at *14 (N.D. Cal. Mar. 5, 2018) ("other district courts ... have rejected § 101
`
`challenges where the claims are directed to a physical device that merely incorporates an abstract
`
`idea as part of its operation")).
`
`In Immersion Corp., a court in the Northern District of California rejected a patent
`
`eligibility challenge, stating the following:
`
`Under Diehr and Thales Visionix, it is clear that simply incorporating an abstract
`idea in part of a claim that is otherwise directed to patentable subject matter does
`not necessarily render the entire claim ineligible. Applying that principle to claim
`19 of the '105 Patent, the Court finds that claim 19 is directed to a device that
`provides haptic feedback to communicate that one of several predetermined user(cid:173)
`independent events has occurred. While Fitbit is correct that notification is a
`prominent idea of claim 19 and that notification is an abstract idea, see,
`e.g. , FairWarning [IP LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
`2016) ], characterizing claim 19 as directed only to the abstract idea of notification,
`or even as directed only to the abstract idea of notification through vibration, strays
`too far from the weight of the claim. The weight of the claim clearly focuses on a
`tangible, non-abstract device as the invention which, through the allegedly
`unconventional combination of components, contains the new and useful feature of
`notifying the device' s user of independent events through vibration.
`
`5
`
`

`

`Case 1:17-cv-01399-RGA Document 17 Filed 06/12/18 Page 7 of 9 PageID #: 188
`
`2018 WL 115679, at * 13. Here, limitations in the asserted claims similarly prevent preemption
`
`of all inventions that use vibrations, or "a vocabulary to convey information." The claims are
`
`directed to tangible systems-a "portable device" and a "mobile station," respectively-and
`
`include "specific components that are configured to perform specific functions in response to
`
`specific events." (D.I. 14 at 11). For example, the asserted claims of the ' 734 and ' 150 patents
`
`respectively require components to perform specific functions in response to "user entry of an
`
`incorrect personal identification number code" and "a selected item on a menu of the user
`
`interface."
`
`Thus, these claims are akin to the claims in Visual Memory LLC v. N VIDIA Corp. , 867
`
`F.3d 1253, 1259 (Fed. Cir. 2017), where the Federal Circuit reversed the district court' s
`
`conclusion that the claims were directed to the "abstract idea of categorical data storage," stating
`
`that the claims "demonstrate[ d] that they are directed to an improved computer memory system,
`
`not the abstract idea of categorical data storage." Likewise, the asserted claims here are directed
`
`to an improved "portable device" and "mobile station," respectively. The claims might
`
`incorporate the abstract idea of "using a vocabulary to convey information," but that does not
`
`mean that each claim in its entirety is directed to the abstract idea of "using a vocabulary to
`
`convey information," or to any other abstract idea.
`
`Defendant characterizes the claims as pertaining to the abstract idea alone. (D.I. 11 at 7).
`
`Because of the claims ' additional limitations, detailed above, Defendant' s characterization
`
`"strays too far from the weight of the claim[s]." See Immerson Corp. , 2018 WL 115679, at *13 .
`
`Defendant argues that "courts routinely invalidate patents claiming tangible systems."
`
`(D.I. 15 at 5). As support, Defendant cites Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838
`
`F.3d 1266, 1272 (Fed. Cir. 2016) (invalidating claims reciting "a handheld wireless device");
`
`6
`
`

`

`Case 1:17-cv-01399-RGA Document 17 Filed 06/12/18 Page 8 of 9 PageID #: 189
`
`Cloud Satchel, LLC v. Amazon.com, Inc., 76 F. Supp. 3d 553, 563 (D. Del. 2014) (invalidating
`
`claims reciting a "portable ... device"); and Intellectual Ventures I LLC v. T-Mobile USA, Inc.,
`
`2017 WL 3706495, at *9, *12 (invalidating claims reciting a "mobile station"). (D.I. 15 at 5-6).
`
`However, these cases are not analogous to the case at hand. In Affinity Labs of Texas, the claim
`
`covered " [ a] media system, comprising" several elements, including "a collection of instructions
`
`.. . configured for execution by a processor of a handless wireless device." 838 F.3d at 1267-68.
`
`The Federal Circuit affirmed that the claim was directed to the abstract idea of "delivering user(cid:173)
`
`selected media content to portable devices." Id. at 1269. In Cloud Satchel, the claim covered
`
`"[a] distributed system for accessing and distributing electronic documents using electronic
`
`document references, the distributed system comprising" several elements, including "a portable
`
`electronic document reference transport device." 76 F. Supp. 2d at 561-62. The court found that
`
`the claim was directed to the abstract idea of "storage and retrieval of electronic documents." Id.
`
`at 563 . In Intellectual Ventures I, the claim covered "[a] method of transmitting a multimedia
`
`message, comprising" several steps, including "receiving a multimedia message from a first
`
`mobile station." 2017 WL 3706495, at *9. The court found that the claim was directed to the
`
`abstract idea of "converting a multimedia message into a common format-an email message-
`
`for sending to another party and then converting the received common format back into [a]
`
`multimedia message." Id. at *9-10. None of these claims are directed to an improved tangible
`
`system. Rather, the claims merely recite unimproved tangible systems within them. Here, on the
`
`other hand, the claims are directed to an improved "portable device" and "mobile station,"
`
`respectively, and recite limitations for those improved tangible systems. Accordingly, each case
`
`cited by Defendant is distinguishable from the case at hand. 1
`
`1 Defendant also argues that the asserted claims use "functional language," such as "alarm means" and
`"control means," making them abstract. (D.I. 15 at 6). However, functional claiming is generally permissible.
`
`7
`
`

`

`Case 1:17-cv-01399-RGA Document 17 Filed 06/12/18 Page 9 of 9 PageID #: 190
`
`I find that the asserted claims are not directed to an abstract idea.
`
`IV. CONCLUSION
`
`Defendant's Motion to Dismiss for Failure to State a Claim is denied. (D.I. 10)
`
`A separate order will be entered.
`
`Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1255-56 (Fed. Cir. 2008). Defendant does not articulate
`why functional claiming renders these particular claims abstract.
`Defendant also argues that the specification describes the "idea underlying the claimed invention" as
`abstract information being conveyed to a user "by utilizing specific silent alarm patterns the user is able to feel."
`(D.I. 15 at 7 (citing ' 150 patent at 2:32-34)). ). It is entirely appropriate for a court to look to the specification to
`understand the claim architecture. SRI Int '/, Inc. v. Cisco Sys., 179 F. Supp. 3d 339, 354 (D. Del. 2016) ("The
`claims as an ordered combination (in light of the specification) sufficiently delineate 'how' the method is performed
`to 'improve the functioning of the computer itself,' thereby providing an inventive concept."). Defendant argues
`that the specification's description "refute[s] [Plaintiff's] claim that [Defendant] oversimplified the abstract idea
`underlying the claimed invention." (D.l. 15 at 7). However, the specification 's description does not change the
`claim architecture. As discussed above, limitations within the claims themselves render the asserted claims non(cid:173)
`abstract.
`
`Accordingly, Defendant's arguments fall short.
`
`8
`
`