Case 1:16-cv-21761-KMM Document 56 Entered on FLSD Docket 03/09/2017 Page 1 of 10
`
`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`
`Case No. 1:16-cv-21761-KMM
`
`Plaintiff,
`
`Defendants.
`
`
`
`
`
`
`
`/
`
`
`
`
`
`
`PRISUA ENGINEERING CORP.,
`
`
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD. et al,
`
`
`
`
`
`
`
`ORDER DENYING MOTION TO DISMISS
`
`THIS CAUSE came before the Court upon Defendants’ Motion to Dismiss (ECF No. 22).
`
`Plaintiff responded (ECF No. 28) and Defendants replied (ECF No. 30). This Motion is now
`
`ripe for review. UPON CONSIDERATION of the Motion, the pertinent portions of the record,
`
`and being otherwise fully advised in the premises, the Court denies Defendants’ Motion to
`
`Dismiss.
`
`I.
`
`BACKGROUND
`
`On May 17, 2016, Prisua Engineering Corp. (“Prisua”), a corporation organized in
`
`Florida with a principal place of business in Coral Gables, Florida, filed a Complaint (ECF No.
`
`1) for patent infringement against Samsung Electronics Co., Ltd. (“Samsung Korea”), Samsung
`
`Electronics America, Inc. (“Samsung America”), and Samsung Electronics Latinoamerica Miami
`
`(“Samsung Miami”) (collectively, “Samsung”), pursuant to Title 35 of the United States Code,
`
`Section 271. See Pl.’s Compl. ¶¶ 1–5.
`
`

`

`Case 1:16-cv-21761-KMM Document 56 Entered on FLSD Docket 03/09/2017 Page 2 of 10
`
`Prisua owns United States Patent No. 8,650,591 (the “‘591 Patent”), entitled “Video
`
`Enabled Digital Devices for Embedding User Data in Interactive Applications.” Id. ¶ 9. The
`
`‘591 Patent was filed by the inventor, Dr. Yolanda Prieto, an officer and director of Prisua, on
`
`March 8, 2011, and issued by the U.S. Patent Office on February 11, 2014. Id. ¶¶ 10–11. Claim
`
`1 of the ‘591 Patent states in relevant part:
`
`An interactive media apparatus for generating a displayable edited video data
`stream from an original video data stream, wherein at least one pixel in a frame of
`said original video data stream is digitally extracted to form a first image, said
`first image then replaced by a second image resulting from a digital extraction of
`at least one pixel in a frame of a user input video data stream, said apparatus
`comprising:
`
`an image capture device capturing the user input video data stream;
`
`an image display device displaying the original video stream;
`
` a
`
` data entry device, operably coupled with the image capture device and the
`image display device, operated by a user to select the at least one pixel in the
`frame of the user input video data stream to use as the second image, and further
`operated by the user to select the at least one pixel to use as the first image;
`
`wherein said data entry device is selected from a group of devices consisting of: a
`keyboard, a display, a wireless communication capability device, and an external
`memory device;
`
` a
`
` digital processing unit operably coupled with the data entry device, said digital
`processing unit performing:
`
`
`identifying the selected at least one pixel in the frame of the user input video
`data stream;
`
`extracting the identified at least one pixel as the second image;
`
`storing the second image in a memory device operably coupled with the
`interactive media apparatus;
`
`receiving a selection of the first image from the original video data stream;
`
`extracting the first image;
`
`
`
`
`2
`
`

`

`Case 1:16-cv-21761-KMM Document 56 Entered on FLSD Docket 03/09/2017 Page 3 of 10
`
`spatially matching an area of the second image to an area of the first image in
`the original video data stream, wherein spatially matching the areas results in
`equal spatial lengths and widths between said two spatially matched areas;
`and
`
`performing a substitution of the spatially matched first image with the
`spatially matched second image to generate the displayable edited video data
`stream from the original video data stream.
`
`Prisua alleges that Samsung manufactures and sells mobile phones, tablets, and cameras
`
`that have a camera functionality that violates the ‘591 Patent. Id. ¶ 14. Prisua alleges that these
`
`infringing products include, but are not limited to: Galaxy S4, S4 mini, S5, SIII, and Samsung
`
`Mega products, the Samsung Galaxy Note 10.1, Galaxy Note Pro, and Galaxy Tab Pro tablets,
`
`and NX300M, NX2000, WB800F, WB350 and WB250 cameras. Id.
`
`Prisua alleges that these products include “an image capture device in the form of a front
`
`and back digital camera, a display device in the form of an LCD screen, and a data entry device
`
`in the form of a touchscreen keyboard.” Id. ¶ 15. The products also include a digital processing
`
`unit. Samsung’s products have a “Best Face” application that uses the product’s image capture
`
`device to capture images. Users of the product are then able to select a portion of the captured
`
`images along with a portion of the original video data stream. The product’s digital processing
`
`unit then uses its memory and processing components to “spatially match[] the second image
`
`(from the user input video data stream) to the first image (from the original video stream).” Id.
`
`This process substitutes the first image with the second image—i.e., the “user-selected ‘Best
`
`Face.’” Id. Prisua alleges that the above violates Prisua’s ‘591 Patent.
`
`On August 29, 2014, Prisua sent Samsung America a letter including a detailed claim
`
`chart alleging Samsung’s patent infringement. Id. ¶ 16. This letter prompted discussions
`
`between Prisua and Samsung Korea; Prisua proposed a license agreement, which Samsung
`
`rejected. Id. ¶ 18.
`
`
`
`3
`
`

`

`Case 1:16-cv-21761-KMM Document 56 Entered on FLSD Docket 03/09/2017 Page 4 of 10
`
`
`
`In its Complaint, Prisua alleges Direct Infringement of the ‘591 Patent against the three
`
`Defendants. Id. Counts 1–3. For relief, Prisua requests that the Court: (1) find Samsung liable
`
`for infringement of the ‘591 Patent; (2) enjoin and restrain Samsung from importing, selling,
`
`and/or offering to sell any products that infringe the ‘591 Patent; (3) award Prisua damages and
`
`treble such amount pursuant to 35 U.S.C. § 284; (4) find this case exceptional under 35 U.S.C. §
`
`285 and therefore award Prisua reasonable attorneys’ fees and expenses, taxable costs and
`
`disbursements, and prejudgment and post-judgment interest; and (5) award Prisua such other and
`
`further relief as the Court deems just and proper.
`
`
`
`Samsung has filed a Motion to Dismiss pursuant to Federal Rule of Civil Procedure
`
`12(b)(6) on the basis that Prisua’s Complaint fails to state a claim upon which relief can be
`
`granted, and requests that the Court dismiss Prisua’s Complaint with prejudice. In the Motion,
`
`Samsung invokes the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347
`
`(2014), which held that laws of nature, natural phenomena, and abstract ideas are not patentable
`
`under 35 U.S.C. § 101 and set out a two-part test for patent-eligibility. See Def.’s Motion at 1
`
`(ECF No. 22). Samsung argues that the “Best Face” application at issue in this litigation is a
`
`“textbook example of a patent-ineligible concept” under Alice’s two-step framework. Id.
`
`According to Samsung, Claim 1 of the ‘591 Patent in fact covers a non-patentable claim because
`
`the “Best Face” application is merely the cutting-and-pasting of portions of images, a “well-
`
`known human activity.” Id. Samsung further asserts that the “Best Face” application lacks the
`
`necessary “inventive step” to elevate this alleged abstract idea to patentable technology.
`
`II.
`
`STANDARD OF REVIEW
`
`“When reviewing a motion to dismiss, a court must construe the complaint in the light
`
`most favorable to the plaintiff and take the factual allegations therein as true.” Recreational
`
`
`
`4
`
`

`

`Case 1:16-cv-21761-KMM Document 56 Entered on FLSD Docket 03/09/2017 Page 5 of 10
`
`Design & Const., Inc. v. Wiss, Janney, Elstner Associates, Inc., 820 F. Supp. 2d 1293, 1296 (S.D.
`
`Fla. 2011). “To survive a motion to dismiss, a complaint must contain sufficient factual matter,
`
`accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556
`
`U.S. 662, 678 (2009) (citations omitted). This standard “demands more than an unadorned, the
`
`defendant-unlawfully-harmed-me accusation.” Id. (citations omitted). This Court must look to
`
`the standards set out by the substantive law at issue. “[A] court may grant a motion to dismiss
`
`when, ‘on the basis of a dispositive issue of law, no construction of the factual allegations will
`
`support the cause of action.’” Pafumi v. Davidson, No. 05-CV-61679, 2007 WL 1729969, at *2
`
`(S.D. Fla. June 14, 2007) (citing Marshall Cty. Bd. of Educ. v. Marshall Cty. Gas Dist., 992 F.2d
`
`1171, 1174 (11th Cir. 1993)).
`
`Furthermore, courts have held the issue of patent ineligibility to be an appropriate
`
`consideration at the pleading stage. See, e.g., Aatrix Software, Inc. v. Green Shades Software,
`
`Inc., No. 3:15-cv-00164-HES-MCR, Dkt. 59 at 13–14 (M.D. Fla. July 15, 2015) (finding that the
`
`“issue of patentable subject matter is purely an issue of law and it is proper for the Court to make
`
`a determination as to patent eligibility . . . under Section 101 at the pleading stage”); see also
`
`Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1374 (Fed. Cir. 2016). Although it is “rare
`
`that a patent infringement suit can be dismissed at the pleading stage for lack of patentable
`
`subject matter,” dismissal is appropriate where “the only plausible reading of the patent [is] that
`
`there is clear and convincing evidence of ineligibility.” See UbiComm, LLC v. Zappos IP, Inc.,
`
`2013 WL 6019203, at *6 (D. Del. Nov. 13, 2013) (quoting Ultramercial, Inc. v. Hulu, LLC, 722
`
`F.3d 1335, 1338–9 (Fed. Cir. 2013)) (internal quotation marks omitted). In making its
`
`determination on patent-eligibility, a court must look at all of the claims of the patent as a whole.
`
`See Diamond v. Deihr, 450 U.S. 175, 188 (1981).
`
`
`
`5
`
`

`

`Case 1:16-cv-21761-KMM Document 56 Entered on FLSD Docket 03/09/2017 Page 6 of 10
`
`III. ANALYSIS
`
`Section 101 of the Patent Act provides that “[w]hoever 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 long held that nature, natural phenomena,
`
`and abstract ideas are three exceptions to this provision. See Alice, 134 S. Ct. at 2354 (citing
`
`Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)).
`
`In Alice, the Supreme Court established a two-part test for courts to determine whether a
`
`patent claim is patent ineligible. First, a court must determine whether the claim at issue falls
`
`into one of the three categories of nature, natural phenomena, or an abstract idea. Id. at 2355. If
`
`the claim does not fall into one of these categories, the claim is patent eligible under § 101. A
`
`patent does not fall into one of these categories simply because the claim involves one of the
`
`patent-ineligible concepts. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
`
`The question is whether the claim is “directed to” one of the categories, an inquiry that considers
`
`whether “their character as a whole is directed to excluded subject matter.” Id. (internal
`
`quotation marks omitted).
`
`The Court in Alice did not precisely establish the parameters for determining whether a
`
`patent claim relates to an abstract idea. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
`
`1245, 1256 (Fed. Cir. 2014). However, Alice suggests a “fundamental economic practice long
`
`prevalent in our system of commerce,” a “longstanding commercial practice,” or “a method of
`
`organizing human activity” as examples. 134 S. Ct. at 2355–56 (citing Bilski v. Kappos, 561
`
`U.S. 593, 611, 619 (2010)). Furthermore, mathematical algorithms, such as those executed by a
`
`general computer, are abstract ideas. DDR Holdings, 773 F.3d at 1256.
`
`
`
`6
`
`

`

`Case 1:16-cv-21761-KMM Document 56 Entered on FLSD Docket 03/09/2017 Page 7 of 10
`
`If a claim is directed to an abstract idea, the court must consider the second issue:
`
`whether the claim includes an “’inventive concept’ sufficient to transform” the claim. Alice, 134
`
`S. Ct. at 2357. Therefore, an abstract idea is only patentable if it also includes an inventive step.
`
`The Court in Alice held that the mere use of a general purpose computer was not sufficient to
`
`transform an abstract idea into a patent-eligible claim, as “wholly generic computer
`
`implementation is not generally the sort of ‘additional feature[e]’ that provides any sort of
`
`‘practical assurance that the process is more than a drafting effort designed to monopolize the
`
`[abstract idea] itself.’” Id. at 2358 (quoting Mayo Collaborative Servs. v. Prometheus
`
`Laboratories, Inc., 132 S. Ct. 1289, 1297 (2012)). However, the Court noted that an invention
`
`that purportedly improved upon the functioning of the computer was sufficient. Id. at 2359.
`
`Samsung argues that the “Best Face” technology is directed to an abstract idea—
`
`specifically, the abstract idea of copying-and-pasting images. See Def.’s Motion at 12. In
`
`support, Samsung asserts that Prisua’s “Best Face” technology is a process that can be performed
`
`by humans alone because cutting-and-pasting images is “a conventional human activity that has
`
`long been performed in arts-and-crafts activities, for example, in creating such things as pictorial
`
`collages.” See Def.’s Motion at 13–14 (citing Mortgage Grader, Inc. v. First Choice Loan Servs.
`
`Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2014)).
`
`
`
`Samsung also argues that the “Best Face” technology is an abstract idea because it is a
`
`simple mathematical application. Samsung cites to a case in the Central District of California,
`
`Coffelt v. NVIDIA Corp., which in applying Alice invalidated a patent at the pleading stage where
`
`it digitally “calculate[ed] color information for vectors in a digital image.” Id. at 14 (citing
`
`Coffelt v. NVIDIA Corp., et al, No. 5-16-cv-00457-SJO, Dkt. 34 (C.D. Cal. June 21, 2016)).
`
`There, the court found that the patent’s “methods of calculating a region of space and comparing
`
`
`
`7
`
`

`

`Case 1:16-cv-21761-KMM Document 56 Entered on FLSD Docket 03/09/2017 Page 8 of 10
`
`various calculations to choose a pixel color” was directed to an abstract, mathematical algorithm.
`
`Coffelt, Dkt. 34 at 9. Samsung also argues that Prisua’s claim relates to a “generic computer
`
`performing a generic function” akin to the patent recently held ineligible in Intellectual Ventures
`
`v. Symantec Corp., Case No. 2015-1769 (Fed. Cir., Sept. 30, 2016).
`
`In response, Prisua counters that the ‘591 Patent is not comparable to the patent in Coffelt
`
`because the latter invention was a mathematical algorithm executed on a generic computer,
`
`whereas the ‘591 Patent is not. See Pl.’s Resp. at 12. Prisua notes that Claim 1 of the Coffelt
`
`patent recites: “A method for deriving a pixel color comprising of steps of: a computer
`
`calculating a first position vector for a geometric graphic object . . .” (emphasis added). Id. The
`
`‘591 Patent does not merely state that the invention is a computer conducting a calculation;
`
`rather, the ‘591 Patent’s Claim 1 details an image processing apparatus that consists an “image
`
`capture device,” an “image display device,” and a “data entry device” that is operated by the user
`
`through a keyboard, display, wireless communication capability device, and an external memory
`
`device. Prisua argues that Claim 1 clearly does not describe a general computer calculating a
`
`mathematical algorithm and therefore, the claim is not an abstract idea.
`
`The Court agrees with Prisua. Samsung seeks to oversimplify the ‘591 Patent in arguing
`
`that the “Best Face” invention uses a generic computer function to perform an action that could
`
`be performed by a human by cutting-and-pasting. The Court declines to equate the “Best Face”
`
`technology with “arts and craft classes” or making collages. This case is unlike Mortgage
`
`Grader, where the court held that a computer-implemented system that enabled borrowers to
`
`anonymously shop online for loan packages included steps that all could have been performed
`
`without the aid of a computer. 811 F.3d at 1324. Furthermore, the “Best Face” technology is
`
`
`
`8
`
`

`

`Case 1:16-cv-21761-KMM Document 56 Entered on FLSD Docket 03/09/2017 Page 9 of 10
`
`distinguishable from Coffelt or Intellectual Ventures in that the ‘591 Patent describes more than
`
`just a “generic computer performing a generic function.”
`
`To grant Samsung’s Motion to Dismiss on the basis of patent-ineligibility would run
`
`contrary to the warnings in Alice and Mayo that courts not construe the categories of patent-
`
`ineligible subject matter too broadly. Alice, 134 S. Ct. at 2354 (cautioning that to do so risks
`
`letting the rule “swallow all of patent law”); Mayo, 132 S. Ct. at 1293 (noting that “too broad an
`
`interpretation . . . could eviscerate patent law” because all inventions involve nature, natural
`
`phenomena, or abstract ideas at some level). For these reasons, the Court finds that the “Best
`
`Face” technology described in the ‘591 Patent is not “directed to” an abstract idea and therefore
`
`is a patentable invention.
`
`Even if this Court were to find that the “Best Face” technology was directed to the
`
`abstract idea of cutting-and-pasting, Prisua sufficiently demonstrates that there is a further
`
`“inventive concept” embedded within the ‘591 Patent. The claim involves an apparatus
`
`consisting of multiple interacting parts in which a digital processing unit performs “spatial
`
`matching.” Prisua argues that this spatial matching function consists of the apparatus performing
`
`an analysis that leads to a spatial “awareness” that improves upon the pre-existing image signal
`
`processing technology. See Pl.’s Resp. at 18–19. In interpreting the facts in the light most
`
`favorable to the non-moving party, pursuant to the standard for a motion to dismiss, this spatial
`
`matching would constitute a further inventive step.
`
`For the reasons above, Samsung has not met the burden required to succeed in a 12(b)6
`
`motion. Prisua’s ‘591 Patent survives the two-step Alice test. The Court finds that Samsung
`
`fails to meet the standard for demonstrating patent ineligibility under § 101.
`
`
`
`
`
`9
`
`

`

`Case 1:16-cv-21761-KMM Document 56 Entered on FLSD Docket 03/09/2017 Page 10 of 10
`
`IV. CONCLUSION
`
`
`
`For the foregoing reasons, it is ORDERED AND ADJUDGED that Defendants’ Motion
`
`to Dismiss (ECF No. 22) is DENIED.
`
`DONE AND ORDERED in Chambers at Miami, Florida, this _____ day of March, 2017.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`cc: All counsel of record
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`K. MICHAEL MOORE
`UNITED STATES DISTRICT JUDGE
`
`
`
`
`
`
`
`
`
`10
`
`