28
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`
`
`NorthernDistrictofCalifornia
`
`UNITED STATES DISTRICT COURT
`
`NORTHERNDISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`UNILOC USAING,etal.,
`
`Case No. 18-CV-06738-LHK
`
`Plaintiffs,
`
`NM .
`
`AMENDED ORDER GRANTING
`MOTIONTO DISMISS
`
`Re: Dkt. No. 86
`
`LG ELECTRONICS USAING,et al.,
`
`Defendants.
`
`This order supersedes ECF No. 107, which has been vacated.
`
`Plaintiffs Uniloc USA Inc., Uniloc Luxembourg S.A., and Uniloc 2017 LLC filed a patent
`
`infringement suit against Defendants LG Electronics USA Inc., LG Electronics Inc., and LG
`
`Electronics MobileComm USA,Inc.Plaintiffs allege that Defendants infringe claims of U.S.
`
`Patent No. 6,993,049 (“the ’049 Patent’). Before the Court is Defendants’ motion to dismiss,
`
`which contendsthat the *049 Patentfails to recite patent-eligible subject matter under 35 U.S.C.
`
`§ 101. ECF No. 86 (“Mot.”). Having considered the submissionsofthe parties, the relevant law,
`
`and the record in this case, the Court finds the 049 Patent invalid under § 101 and GRANTS
`
`Defendants’ motion to dismiss the second amended complaint.
`
`I.
`
`BACKGROUND
`
`Case No, 18-CV-06738-LHK
`
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`1
`
`F
`
`HemeLino
`
`IPR2019-00251
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`

`

`28
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`A. Factual Background
`
`1. The Parties and Technologyat Issue
`
`Plaintiff Uniloc USA Inc. is a Texas corporation. ECF No. 77 (second amended complaint,
`
`or “SAC”) at § 1. Plaintiff Uniloc Luxembourg S.A. is a Luxembourg public limitedliability
`
`company./d. at 4 2. Plaintiff Uniloc 2017 LLC is a Delawarelimited liability company. /d. at § 3.
`
`Defendant LG Electronics USAInc. is a Delaware corporation with a place of business in
`
`Fort Worth, Texas. /d. at § 4. Defendant LG ElectronicsInc. is a Korean corporation with its
`
`principal place of business in Seoul, Korea. /d. at §] 6. Defendant LG Electronics Mobilecomm
`
`USA,Inc. is a California corporation with a place of business in San Diego, California. Jd. at 4 5.
`
`Defendants are alleged to import, use, offer for sale, and sell “electronic devicesthat utilize
`
`Bluetooth Low Energy version 4.0 and above (“Bluetooth”).” /d. at § 11. Plaintiffs accuse more
`
`than 100 of Defendants’ products of infringing the ’049 Patent. Jd. The Court next summarizes the
`
`°049 Patent.
`
`2. The ’049 Patent
`
`The °049 Patentis titled “Communication System.” ’049 Patent at front page. It was filed
`
`on June 7, 2001 and wasissued on January 31, 2006.
`
`The claims of the ’049 are purportedly directed to an improvement on standard Bluetooth
`
`technology. The Court first explains standard Bluetooth technology, then the purported
`
`improvement over standard Bluetooth technology.
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`

`

`28
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`Figure | depicts a standard Bluetooth network configuration. A “host device,” such as a
`
`“portable PC and a cellular phone” can contain a Bluetooth “station.” Jd. at 3:30-38. As depicted
`
`in Figure 1, various stations contained in various host devices (items 100 and 101) can
`
`communicate wirelessly with one another across communication channels (items 104). Each
`
`station belongs to an “tad hoc” network called a “piconet” (items 102a and 102b).
`
`/d. at 1:20-22,
`
`3:36-38. Each piconet contains a “master” station (items 100) thatinitiates and controls
`
`communications with up to 7 other stations knownas “slaves.” Jd. at 3:44-48, 4:48-58. In Figure
`
`1, the slaves are depicted as items 101. /d. at 3:44-46. “In general[,] the networking components
`
`(i.e. the Bluetooth chip for a Bluetooth network)ofall stations [items] 100, 101 will be
`
`implementedidentically.” /d. at 3:38-41. Communications between masterandslave stations
`
`occur via the exchange of data “packets” over a wireless channel. Jd. at 5:19-20.
`
`The application of Bluetooth technology mostrelevant to the 049 Patentis “the
`
`connection of controller devices to host systems.” Jd. at 1:27-28. As described above, a host can
`
`be a computer or a cellphone./d. at 3:30-38. A “controller device, also known as a
`
`Human/machine Interface Device (HID), is an input device such as a keyboard, mouse, games
`
`controller, graphics pad orthe like.” /d. at 1:28-31. “Setting up a link requires a HID to join, as a
`
`slave, the piconet including the host system (which will typically act as the piconet master,i.e. a
`
`base station). Joining the piconet requires two sets of procedures, namely ‘inquiry’ and ‘page.”” Jd.
`
`at 1:52-55. “Inquiry allows a would-beslave to find a base station and issue a requestto join the
`
`piconet. Page allowsa basestation to invite slaves of its choice to join the net.” Jd. at 1:56-58.
`
`“When a Bluetooth unit wants to discover other Bluetooth devices, it enters a so-called
`
`inquiry substate. In this mode, it issues an inquiry message .. . .” Jd. at 4:23-25. In other words, a
`
`master in an inquiry substate issues inquiry messages whenlooking to discover other Bluetooth
`
`slaves. The inquiry message is repeatedly sent over multiple wireless frequencies. Jd. at 4:28-34.
`
`The entire process of sending an inquiry message over multiple frequencies is divided into
`
`timeslots. /d. Each timeslot is dedicated to a specific task undertaken by the master in inquiry
`
`mode. Assumethe masteris at timeslot 2. During timeslot 2, the master sends 2 inquiry messages,
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`3
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`

`

`28 each inquiry message overa different frequency. /d. During the subsequenttimeslot, timeslot 3,
`
`' Plaintiffs have not identified any representative claims ofthe 049 Patent. As discussed below,
`the Court finds claim 2 to be representative of the ’049 Patent.
`4
`
`the master then /istens for any replies to its inquiry messages on the two wireless frequencies over
`
`which the master sent the 2 inquiry messagesin timeslot 2. /d.
`
`In conventional Bluetooth technology, a slave HID can “enter a ‘park’ mode and cease
`
`active communications” with the master. /d. at 1:43-47. “A slave has to be polled before it can
`
`submit a request to leave park mode and becomeactive.”/d. at 1:47-49. “In particular, for a HID
`
`to sign on to the piconet automatically when the host system is turned on it will either have to be
`
`regularly waking up to look for Bluetooth inquiry bursts, thereby consuming power,or it will need
`
`to be manually woken upbythe user.” Jd. at 1:66-2:3. The purported improvementoverthis
`
`standard process of signing on to the piconetis reflected in Figure 5.
`
`
`
`502
`
`504
`
`HID POLL
`
`
`
`FIG. 5
`
`As shownin Figure 5, the standard inquiry messages (item 502) issued by the master have
`
`an extra field (item 504) “appended to them, capable of carrying a HID [(Human/machine
`
`Interface Device)] poll message. The extendedfield [item] 504 may carry a headerthat signifies a
`
`HIDpoll to distinguish it from other applications of extended field information ....” /d. at 4:60-
`
`64; 5:19-20. Thus, the Patent’s alleged novelty lies in “piggy-back[ing]” the extra field (item 504)
`
`onto a standard “inquiry message[ (item 502)]| issued by the master.” /d. at 4:15-20. Adding the
`
`extra field (item 504) provides HIDs “with a rapid response time without the need for a
`
`permanently active communication link” to the master. /d. at abstract.
`
`Plaintiffs assert that Defendants have infringed “claims of the ’049 Patent.” Defendants’
`
`motion to dismiss focuses on claim 2.' Claim 2 recites:
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`
`
`
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`

`

`28
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`2. A primarystation for use in a communications system comprising at least one secondary
`
`station, wherein meansare provided for broadcasting a series of inquiry messages, each in the
`
`form of a plurality of predetermined data fields arranged accordingto a first communications
`
`protocol, and for adding to each inquiry messageprior to transmission an additional data field for
`
`polling at least one secondary station.”
`
`Id. at 7:42-49.
`
`B. Procedural History
`
`On March9, 2018, Plaintiffs Uniloc USA,Inc. and Uniloc Luxembourg, S.A., initiated
`
`suit against Defendants in the Northern District of Texas. ECF No. 1. On July 2, 2018, Plaintiffs
`
`Uniloc USA,Inc. and Uniloc Luxembourg,S.A.filed a first amended complaint. ECF No. 30. On
`
`July 26, 2018, Defendants movedto transfer the case to the Northern District of California. ECF
`
`No. 35. On November5, 2018, Defendants’ motion to transfer the case to the Northern District of
`
`California was granted, ECF No. 45, and on November6, 2018, the case wastransferred to the
`
`Northern District of California, ECF No. 46.
`
`On November20, 2018, pursuant to Patent Local Rule 2-1, Defendants filed a notice of
`
`pendencyof other action involving the same patent. ECF No. 61. Defendants disclosed that the
`
`°049 Patent is being asserted in another case before this Court in Uniloc USA, Inc. v. Logitech, Inc,
`
`Case No. 18-CV-1304-LHK./d. As a result, the instant action was reassigned to this Court on
`
`November21, 2018.
`
`On January 23, 2019, Plaintiffs filed a second amended complaint. ECF No. 77. On
`
`February 6, 2019, Defendants filed the instant motion to dismiss. ECF No. 86 (“Mot.”). On
`
`February 27, 2019, Plaintiffs filed an opposition. ECF No. 95 (“Opp.”).° On March 13, 2019,
`
`Defendants filed a reply. ECF No. 99 (“Reply”).
`
`* Uniloc 2017 LLC,a Plaintiff in the second amended complaint, wasnotlisted as a Plaintiff in
`the original complaint or the first amended complaint.
`> Plaintiffs’ opposition appears to be a near-exact copy of an opposition filed in Uniloc 2017 LLC
`v. LG Electronics U.S.A., Inc. et al., Case No. 18-CV-03071-N, ECF No. 24, in the United States
`District Court for the Northern District of Texas, which involved a different patent.
`5
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`

`

`28
`
`Il.
`
`LEGAL STANDARD
`
`A. Motion to Dismiss Under Federal Rule of Civil Procedure 12(b)(6)
`
`Pursuant to Federal Rule of Civil Procedure 12(b)(6), a defendant may moveto dismiss an
`
`action for failure to allege “enoughfacts to state a claim to relief that is plausible on its face.” Bell
`
`Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the
`
`plaintiff pleads factual content that allows the court to draw the reasonable inferencethat the
`
`defendantis liable for the misconduct alleged. The plausibility standard is not akin to a
`
`‘probability requirement,’ but it asks for more than a sheer possibility that a defendant has acted
`
`unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted).
`
`For purposesofruling on a Rule 12(b)(6) motion, the Court “accept[s] factual allegations
`
`in the complaint as true and construe[s] the pleadings in the light most favorable to the nonmoving
`
`party.” Manzarekv. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).
`eee
`
`Nonetheless, the Court is not required to
`
`“‘assumethe truth of legal conclusions merely because
`
`they are cast in the form offactual allegations.’” Fayer v. Vaughn, 649 F.3d 1061, 1064 (9th Cir.
`
`2011) (quoting W. Mining Council v. Watt, 643 F.2d 618, 624 (9th Cir. 1981)). Mere “conclusory
`
`allegations of law and unwarranted inferencesare insufficient to defeat a motion to dismiss.”
`
`Adamsv. Johnson, 355 F.3d 1179, 1183 (9th Cir. 2004). Furthermore, “‘[a] plaintiff may plead
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`
`
`NorthernDistrictofCalifornia
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`claim.” Weisbuch v. County ofLos Angeles, 119 F.3d 778, 783 n.1 (9th Cir. 1997) (quoting
`
`Warzon v. Drew, 60 F.3d 1234, 1239 (7th Cir. 1995)).
`
`B. Motion to Dismiss for Patent Eligibility Challenges Under 35 U.S.C. § 101
`
`Defendant’s motion arguesthat the patents-in-suit fail to claim patent-eligible subject
`
`matter under 35 U.S.C. § 101 in light of the U.S. Supreme Court’s decision in Alice Corp. Pty.
`
`Ltd. v. CLS Bank International, 573 U.S. 208 (2014). The ultimate question whether a claim
`
`recites patent-eligible subject matter under § 101 is a question of law. Intellectual Ventures I LLC
`
`v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017) (“Patent eligibility under § 101 is
`
`an issue of law[.]”); Jn re Roslin Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014) (same).
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`6
`
`17
`[him]self out of court’”if he “plead[s] facts which establish that he cannot prevail on his...
`18
`
`
`
`
`
`
`
`UnitedStatesDistrictCourt
`
`

`

`dismiss. See, e.g., Secured Mail Sols. LLCv. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir.
`
`28 However, the Federal Circuit has identified that there are certain factual questions underlying the
`
`§ 101 analysis. See Berkheimer v. HP Inc., 881 F.3d 1360, 1368-69 (Fed. Cir. 2018). Accordingly,
`
`a district court may resolve the issue of patenteligibility under § 101 by way of a motion to
`
`2017) (affirming determination ofineligibility made on 12(b)(6) motion); Content Extraction &
`
`Transmission LLC v. Wells Fargo Bank, Nat'l Ass’n, 776 F.3d 1343, 1345 (Fed. Cir. 2014)
`
`(same).
`
`Although claim construction is often desirable, and may sometimes be necessary, to
`
`resolve whethera patent claim is directed to patent-eligible subject matter, the Federal Circuit has
`
`explained that “claim construction is not an inviolable prerequisite to a validity determination
`
`under § 101.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. ofCan. (U.S.), 687 F.3d 1266,
`
`1273 (Fed. Cir. 2012). Where the court has a “full understanding of the basic character of the
`
`claimed subject matter,” the question of patent eligibility may properly be resolved on the
`
`pleadings. Content Extraction, 776 F.3d at 1349; see also Genetic Techs. Ltd. v. Bristol-Myers
`
`Squibb Co., 72 F. Supp. 3d 521, 539 (D. Del. 2014), aff'd sub nom. Genetic Techs. Ltd. v. Merial
`
`L.L.C., 818 F.3d 1369 (Fed. Cir. 2016).
`
`C. Substantive Legal Standards Applicable Under 35 U.S.C. § 101
`
`1. Patent-Eligible Subject Matter Under 35 U.S.C. § 101
`
`Section 101 of Title 35 of the United States Code “defines the subject matter that may be
`
`patented under the Patent Act.” Bilski v. Kappos, 561 U.S. 593, 601 (2010). Under § 101, the
`
`scope of patentable subject matter encompasses “any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvementthereof.” /d. (quoting
`
`35 U.S.C. § 101). These categories are broad, but they are not limitless. Section 101 “contains an
`
`important implicit exception: Lawsofnature, natural phenomena, and abstract ideas are not
`
`patentable.” Alice, 573 U.S. at 216 (citation omitted). These three categories of subject matter are
`
`excepted from patent-eligibility because “they are the basic tools ofscientific and technological
`
`work,” which are “free to all men and reserved exclusively to none.” Mayo Collaborative Servs.v.
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`7
`
`
`
`
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`

`

`28 Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (citations omitted). The U.S. Supreme Court has
`
`First, we determine whether the claimsat issue are directed to one of those patent-
`ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before
`us?” To answer that question, we consider the elements of each claim both
`individually and “as an ordered combination” to determine whether the additional
`elements “transform the nature of the claim”into a patent-eligible application. We
`have described step two ofthis analysis as a search for 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 uponthe [ineligible
`concept] itself.”
`
`explained that allowing patent claims for such purported inventions would “tend to impede
`
`innovation more than it would tend to promoteit,” thereby thwarting the primary object of the
`
`patent laws. /d. However, the U.S. Supreme Court has also cautioned that “[a]t somelevel,all
`
`inventions embody,use, reflect, rest upon, or apply laws of nature, natural phenomena,or abstract
`
`ideas.” Alice, 573 U.S. at 217 (alteration, internal quotation marks, and citation omitted).
`
`Accordingly, courts must “tread carefully in construing this exclusionaryprinciple lest it swallow
`
`all of patent law.” Jd.
`
`In Alice, the leading case on patent-eligible subject matter under § 101, the U.S. Supreme
`
`Court refined the “framework for distinguishing patents that claim lawsof nature, natural
`
`phenomena,and abstract ideas from those that claim patent-eligible applications of those
`
`concepts”originally set forth in Mayo, 566 U.S. at 77. Alice, 573 U.S. at 217. This analysis,
`
`generally knownasthe “Alice” framework, proceeds in two steps as follows:
`
`Id. at 217-18 (alterations in original) (citations omitted); see also In re TLI Commce’ns LLC Patent
`
`Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (describing “the now familiar two-part test described by
`
`the [U.S.] Supreme Court in Alice”).
`
`2. Alice Step One—Identification of Claims Directed to an Abstract Idea
`
`Neither the U.S. Supreme Court nor the Federal Circuit has set forth a bright-line test
`
`separating abstract ideas from concepts that are sufficiently concrete so as to require no further
`
`inquiry underthefirst step of the Alice framework. See, e.g., Alice, 573 U.S. at 221 (noting that
`
`“(the U.S. Supreme Court] need not labor to delimit the precise contours of the ‘abstract ideas’
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`8
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`
`
`
`
`
`
`UnitedStatesDistrictCourt
`
`

`

`28 category in this case”); DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
`
`technology for performing those functions”); Jn re TLI Commce’ns LLC, 823 F.3d at 611 (claims
`
`2014) (observing that the U.S. Supreme Court did not “delimit the precise contours of the ‘abstract
`
`ideas’ category”in Alice (citation omitted)). As a result, in evaluating whether particular claims
`
`are directed to patent-ineligible abstract ideas, courts have generally begun by “compar[ing]
`
`claimsat issue to those claims already found to be directed to an abstract idea in previous cases.”
`
`Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).
`
`Twoof the U.S. Supreme Court’s leading cases concerning the “abstract idea” exception
`
`involved claimsheld to be abstract because they were drawn to longstanding, fundamental
`
`economicpractices. See Alice, 573 U.S. at 219 (claims “drawn to the concept of intermediated
`
`settlement, i.e., the use of a third party to mitigate settlement risk” were directed to a patent-
`
`ineligible abstract idea); Bilski, 561 U.S. at 611-12 (claims drawnto “the basic concept of
`
`hedging, or protecting against risk” were directed to a patent-ineligible abstract idea because
`
`“(hjJedging is a fundamental economic practice long prevalent in our system of commerce and
`
`taught in any introductory finance class” (citation omitted)).
`
`Similarly, the U.S. Supreme Court has recognized that informationitself is intangible. See
`
`Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007). Accordingly, the Federal Circuit
`
`has generally found claims abstract where they are directed to some combination of acquiring
`
`information, analyzing information, and/or displaying the results of that analysis. See
`
`FairWarning IP, LLCv. Tatric Sys., Inc., 839 F.3d 1089, 1094-95 (Fed. Cir. 2016) (claims
`
`“directed to collecting and analyzing information to detect misuse and notifying a user when
`
`misuse is detected” were drawnto a patent-ineligible abstract idea); Elec. Power Grp., LLCv.
`
`Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (claims directed to an abstract idea because
`
`“(t]he advance they purport to makeis a process ofgathering and analyzing information of a
`
`specified content, then displaying the results, and not any particular assertedly inventive
`
`were “directed to the abstract idea of classifying and storing digital images in an organized
`
`manner’’); see also Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases).
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`x
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`
`
`
`
`
`
`UnitedStatesDistrictCourt
`
`

`

`28
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`However, the determination of whether other types of computer-implemented claims are
`
`abstract has proven more “elusive.” See, e.g., Internet Patents Corp. v. Active Network, Inc., 790
`
`F.3d 1343, 1345 (Fed. Cir. 2015) (“[P]recision has been elusive in defining an all-purpose
`
`boundary between the abstract and the concrete[.]”). As a result, in addition to comparing “claims
`
`at issue to those claims already found to be directed to an abstract idea in previous cases,” courts
`
`considering computer-implemented inventions have taken varied approachesto determining
`
`whetherparticular claims are directed to an abstract idea. Enfish, 822 F.3d at 1334.
`
`For example, courts have considered whetherthe claims “purport to improve the
`
`functioning of the computeritself,” Alice, 573 U.S. at 225, which may suggest that the claims are
`
`not abstract, or instead whether “computers are invoked merely as a tool” to carry out an abstract
`
`process, Enfish, 822 F.3d at 1336; see also id. at 1335 (“[S]ome improvements in computer-
`
`related technology when appropriately claimed are undoubtedly not abstract, such as a chip
`
`architecture, an LED display, and the like. Nor do we think that claims directed to software, as
`
`opposed to hardware,are inherently abstract[.]”’). The Federal Circuit has followed this approach
`
`to find claimspatent-eligible in several cases. See Visual Memory LLCv. NVIDIA Corp., 867 F.3d
`
`1253, 1259-60 (Fed. Cir. 2017) (claims directed to an improved memory system were not abstract
`
`because they “focus[ed] on a ‘specific asserted improvement in computer capabilities’—the use of
`
`programmable operational characteristics that are configurable based on the type of processor”
`
`(quoting Enfish, 822 F.3d at 1336)); McRO,Inc. v. Bandai Namco Games Am.Inc., 837 F.3d
`
`1299, 1314 (Fed. Cir. 2016) (claims directed to automating part of a preexisting method for 3-D
`
`facial expression animation werenot abstract because they “focused on a specific asserted
`
`improvement in computer animation,i.e., the automatic use of rules of a particular type”); Enfish,
`
`822 F.3d at 1335-36 (claims directed to a specific type of self-referential table in a computer
`
`database were not abstract because they focused “on the specific asserted improvement in
`
`computer capabilities(i.e., the self-referential table for a computer database)”).
`
`Similarly, the Federal Circuit has found that claims directed to a “new and useful
`
`technique” for performing a particular task were not abstract. See Thales Visionix Inc. v. United
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`10
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`

`

`technique for using sensors to moreefficiently track an object on a moving platform” were not
`
`abstract); Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048, 1050 (Fed. Cir. 2016)
`
`(holding that claims directed to “a new and useful laboratory technique for preserving
`
`hepatocytes,” a type ofliver cell, were not abstract); see also Diamond v. Diehr, 450 U.S. 175,
`
`187 (1981) (holding that claims for a method to cure rubber that employed a formula to calculate
`
`the optimal cure time were notabstract).
`
`Another helpful tool used by courts in the abstract idea inquiry is consideration of whether
`
`the claims have an analogyto the brick-and-mortar world, such that they cover a “fundamental...
`
`
`
`
`
`
`
`UnitedStatesDistrictCourt
`
`28 States, 850 F.3d 1343, 1349 (Fed. Cir. 2017) (holding that “claims directed to a new and useful
`
`whetherthe claimsare, in essence, directed to a mental process or a process that could be done
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`practice long prevalent in our system.” Alice, 573 U.S. at 219; see, e.g., Intellectual Ventures I
`
`LLCv. Symantec Corp., 838 F.3d 1307, 1317 (Fed. Cir. 2016) (finding an email processing
`
`software program to be abstract through comparison to a “brick-and-mortar” post office);
`
`Intellectual Ventures I LLCv. Symantec Corp., 100 F. Supp. 3d 371, 383 (D. Del. 2015) (“Another
`
`helpful way of assessing whetherthe claims of the patent are directed to an abstract idea is to
`
`considerif all of the steps of the claim could be performed by human beingsin a non-
`
`computerized ‘brick and mortar’ context.” (citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
`
`1353 (Fed. Cir. 2014)).
`
`Courts will also (or alternatively, as the facts require) consider a related question of
`
`with pencil and paper. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147 (Fed.
`
`Cir. 2016) (claimsfor translating a functional description of a logic circuit into a hardware
`
`componentdescription ofthe logic circuit were patent-ineligible because the “method can be
`
`performed mentally or with pencil and paper’); CyberSource Corp. v. Retail Decisions, Inc., 654
`
`F.3d 1366, 1372 (Fed. Cir. 2011) (claim for verifying the validity of a credit card transaction over
`
`the Internet was patent-ineligible because the “steps can be performed in the human mind,or by a
`
`humanusing a pen and paper’); see also, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs.
`
`Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (claims for computer-implemented system to enable
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`11
`
`

`

`28 borrowers to shop for loan packages anonymously were abstract where “[t]he series of steps
`
`* One court has noted that, like all tools of analysis, the “pencil and paper” analogy must not be
`unthinkingly applied. See Cal. Inst. of Tech. v. Hughes Comme’nsInc., 59 F. Supp. 3d 974, 995
`(C.D. Cal. 2014) (viewing pencil-and-papertest as a “stand-in for another concern: that humans
`engaged in the sameactivity long before the invention of computers,” and concluding that test was
`unhelpful where “error correction codes were not conventionalactivity that humans engaged in
`before computers”).
`
`covered by the asserted claims. .
`
`. could all be performed by humans without a computer’”).*
`
`Regardless of the particular analysis that is best suited to the specific facts at issue in a
`
`case, however, the Federal Circuit has emphasizedthat“the first step of the [Alice] inquiry is a
`
`meaningful one, 1.e.,. .
`
`. a substantial class of claims are not directed to a patent-ineligible
`
`concept.” Enfish, 822 F.3d at 1335. The court’s task is thus not to determine whether claims
`
`merely involve an abstract idea at somelevel, see id., but rather to examine the claims “in their
`
`entirety to ascertain whethertheir character as a wholeis directed to excluded subject matter,”
`
`Internet Patents, 790 F.3d at 1346.
`
`3. Alice Step Two—Evaluation of Abstract Claims for an Inventive Concept
`
`A claim drawnto an abstract idea is not necessarily invalid if the claim’s limitations—
`
`considered individually or as an ordered combination—serveto “transform the claimsinto a
`
`patent-eligible application.” Content Extraction, 776 F.3d at 1348. Thus, the second step of the
`
`Alice analysis (the search for an “inventive concept’) asks whether the claim contains an element
`
`or combination of elements that “ensure[s] that the patent in practice amounts to significantly
`
`more than a patent upon the [abstract idea] itself.” 573 U.S. at 218 (citation omitted).
`
`The U.S. Supreme Court has madeclear that transforming an abstract idea to a patent-
`
`eligible application of the idea requires more than simply reciting the idea followed by “applyit.”
`
`Id. at 221 (quoting Mayo, 566 U.S. at 72). In that regard, the Federal Circuit has repeatedly held
`
`that “[flor the role of a computer in a computer-implemented invention to be deemed meaningful
`
`in the context of this analysis, it must involve more than performanceof ‘well-understood, routine,
`
`[and] conventionalactivities previously knownto the industry.’” Content Extraction, 776 F.3d at
`
`1347-48 (alteration in original) (quoting Alice, 134573 U.S. at 225); see also Mortg. Grader, 811
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`12
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`
`
`
`
`
`
`UnitedStatesDistrictCourt
`
`

`

`and ‘database’ . .
`
`. do not satisfy the inventive concept requirement”); Bancorp Servs., 687 F.3d at
`
`1278 (“To salvage an otherwise patent-ineligible process, a computer mustbe integral to the
`
`claimed invention,facilitating the process in a way that a person making calculations or
`
`computations could not.”).
`
`Likewise, “[i]t is well-settled that mere recitation of concrete, tangible componentsis
`
`insufficient to confer patent eligibility to an otherwise abstract idea” where those components
`
`28 F.3d at 1324-25 (holding that “generic computer components such as an ‘interface,’ ‘network,’
`
`simply perform their “well-understood, routine, conventional” functions. Jn re TLI Comme ’ns
`
`LLC, 823 F.3d at 613 (citation omitted); see also id. (ruling that “telephone unit,”“server,” “image
`
`analysis unit,” and “control unit” limitations were insufficient to satisfy Alice step two where
`
`claims were drawnto abstractidea of classifying and storing digital images in an organized
`
`manner). “The question of whether a claim element or combination of elements is well-
`
`understood, routine and conventionalto a skilled artisan in the relevant field is a question of fact”
`
`that “must be proven by clear and convincing evidence.” Berkheimer, 881 F.3d at 1368. This
`
`inquiry “goes beyond what was simply knownin the priorart.” Jd. at 1369.
`
`In addition, the U.S. Supreme Court explained in Bi/ski that “limiting an abstract idea to
`
`one field of use or adding token postsolution components [does] not make the concept patentable.”
`
`561 U.S. at 612 (citing Parker v. Flook, 437 U.S. 584 (1978)); see also Alice, 573 U.S. at 222
`
`(same). The Federal Circuit has similarly stated that attempts “to limit the use of the abstract idea
`
`to a particular technological environment”are insufficient to render an abstract idea patent-
`
`eligible. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (internal quotation
`
`marksandcitation omitted); see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792
`
`F.3d 1363, 1366 (Fed. Cir. 2015) (“An abstract idea does not become nonabstract by limiting the
`
`invention to a particular field of use or technological environment, such asthe Internet.”’).
`
`In addition, a “non-conventional and non-generic arrangement of known, conventional
`
`pieces” can amountto an inventive concept. BASCOM Glob. Internet Servs., Inc. v. AT&T
`
`Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). For example, in BASCOM,the Federal
`
`
`
`NorthernDistrictofCalifornia
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTIONTO DISMISS
`
`13
`
`
`
`
`
`
`
`UnitedStatesDistrictCourt
`
`

`

`generic arrangement of known, conventional pieces” that provided an inventive concept. Jd. As
`
`28 Circuit addressed a claim for Internet contentfiltering performed at “a specific location, remote
`
`from the end-users, with customizablefiltering features specific to each end user.” Jd. Becausethis
`
`“specific location” was different from the location where Internet content filtering was
`
`traditionally performed, the Federal Circuit concluded this was a “non-conventional and non-
`
`another example, in Amdocs (Israel) Ltd. v. Openet Telecom,Inc., the Federal Circuit held that
`
`claimsrelating to solutions for managing accounting andbilling data overlarge, disparate
`
`networks recited an inventive concept because they contained “specific enhancinglimitation[s]
`
`that necessarily incorporate[d] the invention’s distributed architecture.” 841 F.3d 1288, 1301 (Fed.
`
`Cir. 2016), cert. denied, 138 S. Ct. 469 (Nov. 27, 2017). The use of a “dis