Case 5:18-cv-06738-LHK Document 109 Filed 04/09/19 Page 1 of 34
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`UNILOC USA INC, et al.,
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`Plaintiffs,
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`v.
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`LG ELECTRONICS USA INC, et al.,
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`Defendants.
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`Case No. 18-CV-06738-LHK
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`AMENDED ORDER GRANTING
`MOTION TO DISMISS
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`Re: Dkt. No. 86
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`This order supersedes ECF No. 107, which has been vacated.
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`Plaintiffs Uniloc USA Inc., Uniloc Luxembourg S.A., and Uniloc 2017 LLC filed a patent
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`infringement suit against Defendants LG Electronics USA Inc., LG Electronics Inc., and LG
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`Electronics MobileComm USA, Inc. Plaintiffs allege that Defendants infringe claims of U.S.
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`Patent No. 6,993,049 (“the ’049 Patent”). Before the Court is Defendants’ motion to dismiss,
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`which contends that the ’049 Patent fails to recite patent-eligible subject matter under 35 U.S.C.
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`§ 101. ECF No. 86 (“Mot.”). Having considered the submissions of the parties, the relevant law,
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`and the record in this case, the Court finds the ’049 Patent invalid under § 101 and GRANTS
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`Defendants’ motion to dismiss the second amended complaint.
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`I.
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`BACKGROUND
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`Case 5:18-cv-06738-LHK Document 109 Filed 04/09/19 Page 2 of 34
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`A. Factual Background
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`1. The Parties and Technology at Issue
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`Plaintiff Uniloc USA Inc. is a Texas corporation. ECF No. 77 (second amended complaint,
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`or “SAC”) at ¶ 1. Plaintiff Uniloc Luxembourg S.A. is a Luxembourg public limited liability
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`company. Id. at ¶ 2. Plaintiff Uniloc 2017 LLC is a Delaware limited liability company. Id. at ¶ 3.
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`Defendant LG Electronics USA Inc. is a Delaware corporation with a place of business in
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`Fort Worth, Texas. Id. at ¶ 4. Defendant LG Electronics Inc. is a Korean corporation with its
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`principal place of business in Seoul, Korea. Id. at ¶ 6. Defendant LG Electronics Mobilecomm
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`USA, Inc. is a California corporation with a place of business in San Diego, California. Id. at ¶ 5.
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`Defendants are alleged to import, use, offer for sale, and sell “electronic devices that utilize
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`Bluetooth Low Energy version 4.0 and above (“Bluetooth”).” Id. at ¶ 11. Plaintiffs accuse more
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`than 100 of Defendants’ products of infringing the ’049 Patent. Id. The Court next summarizes the
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`’049 Patent.
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`2. The ’049 Patent
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`The ’049 Patent is titled “Communication System.” ’049 Patent at front page. It was filed
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`on June 7, 2001 and was issued on January 31, 2006.
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`The claims of the ’049 are purportedly directed to an improvement on standard Bluetooth
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`technology. The Court first explains standard Bluetooth technology, then the purported
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`improvement over standard Bluetooth technology.
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`Case 5:18-cv-06738-LHK Document 109 Filed 04/09/19 Page 3 of 34
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`Figure 1 depicts a standard Bluetooth network configuration. A “host device,” such as a
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`“portable PC and a cellular phone” can contain a Bluetooth “station.” Id. at 3:30-38. As depicted
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`in Figure 1, various stations contained in various host devices (items 100 and 101) can
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`communicate wirelessly with one another across communication channels (items 104). Each
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`station belongs to an “ad hoc” network called a “piconet” (items 102a and 102b). Id. at 1:20-22,
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`3:36-38. Each piconet contains a “master” station (items 100) that initiates and controls
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`communications with up to 7 other stations known as “slaves.” Id. at 3:44-48, 4:48-58. In Figure
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`1, the slaves are depicted as items 101. Id. at 3:44-46. “In general[,] the networking components
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`(i.e. the Bluetooth chip for a Bluetooth network) of all stations [items] 100, 101 will be
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`implemented identically.” Id. at 3:38-41. Communications between master and slave stations
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`occur via the exchange of data “packets” over a wireless channel. Id. at 5:19-20.
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`The application of Bluetooth technology most relevant to the ’049 Patent is “the
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`connection of controller devices to host systems.” Id. at 1:27-28. As described above, a host can
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`be a computer or a cellphone. Id. at 3:30-38. A “controller device, also known as a
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`Human/machine Interface Device (HID), is an input device such as a keyboard, mouse, games
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`controller, graphics pad or the like.” Id. at 1:28-31. “Setting up a link requires a HID to join, as a
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`slave, the piconet including the host system (which will typically act as the piconet master, i.e. a
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`base station). Joining the piconet requires two sets of procedures, namely ‘inquiry’ and ‘page.’” Id.
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`at 1:52-55. “Inquiry allows a would-be slave to find a base station and issue a request to join the
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`piconet. Page allows a base station to invite slaves of its choice to join the net.” Id. at 1:56-58.
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`“When a Bluetooth unit wants to discover other Bluetooth devices, it enters a so-called
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`inquiry substate. In this mode, it issues an inquiry message . . . .” Id. at 4:23-25. In other words, a
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`master in an inquiry substate issues inquiry messages when looking to discover other Bluetooth
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`slaves. The inquiry message is repeatedly sent over multiple wireless frequencies. Id. at 4:28-34.
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`The entire process of sending an inquiry message over multiple frequencies is divided into
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`timeslots. Id. Each timeslot is dedicated to a specific task undertaken by the master in inquiry
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`mode. Assume the master is at timeslot 2. During timeslot 2, the master sends 2 inquiry messages,
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`Case 5:18-cv-06738-LHK Document 109 Filed 04/09/19 Page 4 of 34
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`each inquiry message over a different frequency. Id. During the subsequent timeslot, timeslot 3,
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`the master then listens for any replies to its inquiry messages on the two wireless frequencies over
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`which the master sent the 2 inquiry messages in timeslot 2. Id.
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`In conventional Bluetooth technology, a slave HID can “enter a ‘park’ mode and cease
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`active communications” with the master. Id. at 1:43-47. “A slave has to be polled before it can
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`submit a request to leave park mode and become active.” Id. at 1:47-49. “In particular, for a HID
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`to sign on to the piconet automatically when the host system is turned on it will either have to be
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`regularly waking up to look for Bluetooth inquiry bursts, thereby consuming power, or it will need
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`to be manually woken up by the user.” Id. at 1:66-2:3. The purported improvement over this
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`standard process of signing on to the piconet is reflected in Figure 5.
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`As shown in Figure 5, the standard inquiry messages (item 502) issued by the master have
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`an extra field (item 504) “appended to them, capable of carrying a HID [(Human/machine
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`Interface Device)] poll message. The extended field [item] 504 may carry a header that signifies a
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`HID poll to distinguish it from other applications of extended field information . . . .” Id. at 4:60-
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`64; 5:19-20. Thus, the Patent’s alleged novelty lies in “piggy-back[ing]” the extra field (item 504)
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`onto a standard “inquiry message[ (item 502)] issued by the master.” Id. at 4:15-20. Adding the
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`extra field (item 504) provides HIDs “with a rapid response time without the need for a
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`permanently active communication link” to the master. Id. at abstract.
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`Plaintiffs assert that Defendants have infringed “claims of the ’049 Patent.” Defendants’
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`motion to dismiss focuses on claim 2.1 Claim 2 recites:
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`1 Plaintiffs have not identified any representative claims of the ’049 Patent. As discussed below,
`the Court finds claim 2 to be representative of the ’049 Patent.
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`Case 5:18-cv-06738-LHK Document 109 Filed 04/09/19 Page 5 of 34
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`2. A primary station for use in a communications system comprising at least one secondary
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`station, wherein means are provided for broadcasting a series of inquiry messages, each in the
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`form of a plurality of predetermined data fields arranged according to a first communications
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`protocol, and for adding to each inquiry message prior to transmission an additional data field for
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`polling at least one secondary station.”
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`Id. at 7:42-49.
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`B. Procedural History
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`On March 9, 2018, Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg, S.A.,2 initiated
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`suit against Defendants in the Northern District of Texas. ECF No. 1. On July 2, 2018, Plaintiffs
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`Uniloc USA, Inc. and Uniloc Luxembourg, S.A. filed a first amended complaint. ECF No. 30. On
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`July 26, 2018, Defendants moved to transfer the case to the Northern District of California. ECF
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`No. 35. On November 5, 2018, Defendants’ motion to transfer the case to the Northern District of
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`California was granted, ECF No. 45, and on November 6, 2018, the case was transferred to the
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`Northern District of California, ECF No. 46.
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`On November 20, 2018, pursuant to Patent Local Rule 2-1, Defendants filed a notice of
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`pendency of other action involving the same patent. ECF No. 61. Defendants disclosed that the
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`’049 Patent is being asserted in another case before this Court in Uniloc USA, Inc. v. Logitech, Inc,
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`Case No. 18-CV-1304-LHK. Id. As a result, the instant action was reassigned to this Court on
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`November 21, 2018.
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`On January 23, 2019, Plaintiffs filed a second amended complaint. ECF No. 77. On
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`February 6, 2019, Defendants filed the instant motion to dismiss. ECF No. 86 (“Mot.”). On
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`February 27, 2019, Plaintiffs filed an opposition. ECF No. 95 (“Opp.”).3 On March 13, 2019,
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`Defendants filed a reply. ECF No. 99 (“Reply”).
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`2 Uniloc 2017 LLC, a Plaintiff in the second amended complaint, was not listed as a Plaintiff in
`the original complaint or the first amended complaint.
`3 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.
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`Case 5:18-cv-06738-LHK Document 109 Filed 04/09/19 Page 6 of 34
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`II.
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`LEGAL STANDARD
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`A. Motion to Dismiss Under Federal Rule of Civil Procedure 12(b)(6)
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`Pursuant to Federal Rule of Civil Procedure 12(b)(6), a defendant may move to dismiss an
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`action for failure to allege “enough facts to state a claim to relief that is plausible on its face.” Bell
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`Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the
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`plaintiff pleads factual content that allows the court to draw the reasonable inference that the
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`defendant is liable for the misconduct alleged. The plausibility standard is not akin to a
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`‘probability requirement,’ but it asks for more than a sheer possibility that a defendant has acted
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`unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted).
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`For purposes of ruling on a Rule 12(b)(6) motion, the Court “accept[s] factual allegations
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`in the complaint as true and construe[s] the pleadings in the light most favorable to the nonmoving
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`party.” Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).
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`Nonetheless, the Court is not required to “‘assume the truth of legal conclusions merely because
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`they are cast in the form of factual allegations.’” Fayer v. Vaughn, 649 F.3d 1061, 1064 (9th Cir.
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`2011) (quoting W. Mining Council v. Watt, 643 F.2d 618, 624 (9th Cir. 1981)). Mere “conclusory
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`allegations of law and unwarranted inferences are insufficient to defeat a motion to dismiss.”
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`Adams v. Johnson, 355 F.3d 1179, 1183 (9th Cir. 2004). Furthermore, “‘[a] plaintiff may plead
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`[him]self out of court’” if he “plead[s] facts which establish that he cannot prevail on his . . .
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`claim.” Weisbuch v. County of Los Angeles, 119 F.3d 778, 783 n.1 (9th Cir. 1997) (quoting
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`Warzon v. Drew, 60 F.3d 1234, 1239 (7th Cir. 1995)).
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`B. Motion to Dismiss for Patent Eligibility Challenges Under 35 U.S.C. § 101
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`Defendant’s motion argues that the patents-in-suit fail to claim patent-eligible subject
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`matter under 35 U.S.C. § 101 in light of the U.S. Supreme Court’s decision in Alice Corp. Pty.
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`Ltd. v. CLS Bank International, 573 U.S. 208 (2014). The ultimate question whether a claim
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`recites patent-eligible subject matter under § 101 is a question of law. Intellectual Ventures I LLC
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`v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017) (“Patent eligibility under § 101 is
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`an issue of law[.]”); In re Roslin Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014) (same).
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`However, the Federal Circuit has identified that there are certain factual questions underlying the
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`§ 101 analysis. See Berkheimer v. HP Inc., 881 F.3d 1360, 1368-69 (Fed. Cir. 2018). Accordingly,
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`a district court may resolve the issue of patent eligibility under § 101 by way of a motion to
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`dismiss. See, e.g., Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir.
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`2017) (affirming determination of ineligibility made on 12(b)(6) motion); Content Extraction &
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`Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345 (Fed. Cir. 2014)
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`(same).
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`Although claim construction is often desirable, and may sometimes be necessary, to
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`resolve whether a patent claim is directed to patent-eligible subject matter, the Federal Circuit has
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`explained that “claim construction is not an inviolable prerequisite to a validity determination
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`under § 101.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266,
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`1273 (Fed. Cir. 2012). Where the court has a “full understanding of the basic character of the
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`claimed subject matter,” the question of patent eligibility may properly be resolved on the
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`pleadings. Content Extraction, 776 F.3d at 1349; see also Genetic Techs. Ltd. v. Bristol-Myers
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`Squibb Co., 72 F. Supp. 3d 521, 539 (D. Del. 2014), aff’d sub nom. Genetic Techs. Ltd. v. Merial
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`L.L.C., 818 F.3d 1369 (Fed. Cir. 2016).
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`C. Substantive Legal Standards Applicable Under 35 U.S.C. § 101
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`1. Patent-Eligible Subject Matter Under 35 U.S.C. § 101
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`Section 101 of Title 35 of the United States Code “defines the subject matter that may be
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`patented under the Patent Act.” Bilski v. Kappos, 561 U.S. 593, 601 (2010). Under § 101, the
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`scope of patentable subject matter encompasses “any new and useful process, machine,
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`manufacture, or composition of matter, or any new and useful improvement thereof.” Id. (quoting
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`35 U.S.C. § 101). These categories are broad, but they are not limitless. Section 101 “contains an
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`important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not
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`patentable.” Alice, 573 U.S. at 216 (citation omitted). These three categories of subject matter are
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`excepted from patent-eligibility because “they are the basic tools of scientific and technological
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`work,” which are “free to all men and reserved exclusively to none.” Mayo Collaborative Servs. v.
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`Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (citations omitted). The U.S. Supreme Court has
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`explained that allowing patent claims for such purported inventions would “tend to impede
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`innovation more than it would tend to promote it,” thereby thwarting the primary object of the
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`patent laws. Id. However, the U.S. Supreme Court has also cautioned that “[a]t some level, all
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`inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
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`ideas.” Alice, 573 U.S. at 217 (alteration, internal quotation marks, and citation omitted).
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`Accordingly, courts must “tread carefully in construing this exclusionary principle lest it swallow
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`all of patent law.” Id.
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`In Alice, the leading case on patent-eligible subject matter under § 101, the U.S. Supreme
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`Court refined the “framework for distinguishing patents that claim laws of nature, natural
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`phenomena, and abstract ideas from those that claim patent-eligible applications of those
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`concepts” originally set forth in Mayo, 566 U.S. at 77. Alice, 573 U.S. at 217. This analysis,
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`generally known as the “Alice” framework, proceeds in two steps as follows:
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`First, we determine whether the claims at 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 of this 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 upon the [ineligible
`concept] itself.”
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`Id. at 217-18 (alterations in original) (citations omitted); see also In re TLI Commc’ns LLC Patent
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`Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (describing “the now familiar two-part test described by
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`the [U.S.] Supreme Court in Alice”).
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`2. Alice Step One—Identification of Claims Directed to an Abstract Idea
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`Neither the U.S. Supreme Court nor the Federal Circuit has set forth a bright-line test
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`separating abstract ideas from concepts that are sufficiently concrete so as to require no further
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`inquiry under the first step of the Alice framework. See, e.g., Alice, 573 U.S. at 221 (noting that
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`“[the U.S. Supreme Court] need not labor to delimit the precise contours of the ‘abstract ideas’
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`category in this case”); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
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`2014) (observing that the U.S. Supreme Court did not “delimit the precise contours of the ‘abstract
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`ideas’ category” in Alice (citation omitted)). As a result, in evaluating whether particular claims
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`are directed to patent-ineligible abstract ideas, courts have generally begun by “compar[ing]
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`claims at issue to those claims already found to be directed to an abstract idea in previous cases.”
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`Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).
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`Two of the U.S. Supreme Court’s leading cases concerning the “abstract idea” exception
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`involved claims held to be abstract because they were drawn to longstanding, fundamental
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`economic practices. See Alice, 573 U.S. at 219 (claims “drawn to the concept of intermediated
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`settlement, i.e., the use of a third party to mitigate settlement risk” were directed to a patent-
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`ineligible abstract idea); Bilski, 561 U.S. at 611-12 (claims drawn to “the basic concept of
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`hedging, or protecting against risk” were directed to a patent-ineligible abstract idea because
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`“[h]edging is a fundamental economic practice long prevalent in our system of commerce and
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`taught in any introductory finance class” (citation omitted)).
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`Similarly, the U.S. Supreme Court has recognized that information itself is intangible. See
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`Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007). Accordingly, the Federal Circuit
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`has generally found claims abstract where they are directed to some combination of acquiring
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`information, analyzing information, and/or displaying the results of that analysis. See
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`FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094-95 (Fed. Cir. 2016) (claims
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`“directed to collecting and analyzing information to detect misuse and notifying a user when
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`misuse is detected” were drawn to a patent-ineligible abstract idea); Elec. Power Grp., LLC v.
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`Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (claims directed to an abstract idea because
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`“[t]he advance they purport to make is a process of gathering and analyzing information of a
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`specified content, then displaying the results, and not any particular assertedly inventive
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`technology for performing those functions”); In re TLI Commc’ns LLC, 823 F.3d at 611 (claims
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`were “directed to the abstract idea of classifying and storing digital images in an organized
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`manner”); see also Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases).
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`Case 5:18-cv-06738-LHK Document 109 Filed 04/09/19 Page 10 of 34
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`However, the determination of whether other types of computer-implemented claims are
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`abstract has proven more “elusive.” See, e.g., Internet Patents Corp. v. Active Network, Inc., 790
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`F.3d 1343, 1345 (Fed. Cir. 2015) (“[P]recision has been elusive in defining an all-purpose
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`boundary between the abstract and the concrete[.]”). As a result, in addition to comparing “claims
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`at issue to those claims already found to be directed to an abstract idea in previous cases,” courts
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`considering computer-implemented inventions have taken varied approaches to determining
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`whether particular claims are directed to an abstract idea. Enfish, 822 F.3d at 1334.
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`For example, courts have considered whether the claims “purport to improve the
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`functioning of the computer itself,” Alice, 573 U.S. at 225, which may suggest that the claims are
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`not abstract, or instead whether “computers are invoked merely as a tool” to carry out an abstract
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`process, Enfish, 822 F.3d at 1336; see also id. at 1335 (“[S]ome improvements in computer-
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`related technology when appropriately claimed are undoubtedly not abstract, such as a chip
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`architecture, an LED display, and the like. Nor do we think that claims directed to software, as
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`opposed to hardware, are inherently abstract[.]”). The Federal Circuit has followed this approach
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`to find claims patent-eligible in several cases. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d
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`1253, 1259–60 (Fed. Cir. 2017) (claims directed to an improved memory system were not abstract
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`because they “focus[ed] on a ‘specific asserted improvement in computer capabilities’—the use of
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`programmable operational characteristics that are configurable based on the type of processor”
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`(quoting Enfish, 822 F.3d at 1336)); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
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`1299, 1314 (Fed. Cir. 2016) (claims directed to automating part of a preexisting method for 3-D
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`facial expression animation were not abstract because they “focused on a specific asserted
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`improvement in computer animation, i.e., the automatic use of rules of a particular type”); Enfish,
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`822 F.3d at 1335–36 (claims directed to a specific type of self-referential table in a computer
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`database were not abstract because they focused “on the specific asserted improvement in
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`computer capabilities (i.e., the self-referential table for a computer database)”).
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`Similarly, the Federal Circuit has found that claims directed to a “new and useful
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`technique” for performing a particular task were not abstract. See Thales Visionix Inc. v. United
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`Case No. 18-CV-06738-LHK
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`States, 850 F.3d 1343, 1349 (Fed. Cir. 2017) (holding that “claims directed to a new and useful
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`technique for using sensors to more efficiently track an object on a moving platform” were not
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`abstract); Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048, 1050 (Fed. Cir. 2016)
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`(holding that claims directed to “a new and useful laboratory technique for preserving
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`hepatocytes,” a type of liver cell, were not abstract); see also Diamond v. Diehr, 450 U.S. 175,
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`187 (1981) (holding that claims for a method to cure rubber that employed a formula to calculate
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`the optimal cure time were not abstract).
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`Another helpful tool used by courts in the abstract idea inquiry is consideration of whether
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`the claims have an analogy to the brick-and-mortar world, such that they cover a “fundamental . . .
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`practice long prevalent in our system.” Alice, 573 U.S. at 219; see, e.g., Intellectual Ventures I
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`LLC v. Symantec Corp., 838 F.3d 1307, 1317 (Fed. Cir. 2016) (finding an email processing
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`software program to be abstract through comparison to a “brick-and-mortar” post office);
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`Intellectual Ventures I LLC v. Symantec Corp., 100 F. Supp. 3d 371, 383 (D. Del. 2015) (“Another
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`helpful way of assessing whether the claims of the patent are directed to an abstract idea is to
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`consider if all of the steps of the claim could be performed by human beings in a non-
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`computerized ‘brick and mortar’ context.” (citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
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`1353 (Fed. Cir. 2014)).
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`Courts will also (or alternatively, as the facts require) consider a related question of
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`whether the claims are, in essence, directed to a mental process or a process that could be done
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`with pencil and paper. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147 (Fed.
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`Cir. 2016) (claims for translating a functional description of a logic circuit into a hardware
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`component description of the logic circuit were patent-ineligible because the “method can be
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`performed mentally or with pencil and paper”); CyberSource Corp. v. Retail Decisions, Inc., 654
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`F.3d 1366, 1372 (Fed. Cir. 2011) (claim for verifying the validity of a credit card transaction over
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`the Internet was patent-ineligible because the “steps can be performed in the human mind, or by a
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`human using a pen and paper”); see also, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs.
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`Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (claims for computer-implemented system to enable
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`Case 5:18-cv-06738-LHK Document 109 Filed 04/09/19 Page 12 of 34
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`borrowers to shop for loan packages anonymously were abstract where “[t]he series of steps
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`covered by the asserted claims . . . could all be performed by humans without a computer”).4
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`Regardless of the particular analysis that is best suited to the specific facts at issue in a
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`case, however, the Federal Circuit has emphasized that “the first step of the [Alice] inquiry is a
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`meaningful one, i.e., . . . a substantial class of claims are not directed to a patent-ineligible
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`concept.” Enfish, 822 F.3d at 1335. The court’s task is thus not to determine whether claims
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`merely involve an abstract idea at some level, see id., but rather to examine the claims “in their
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`entirety to ascertain whether their character as a whole is directed to excluded subject matter,”
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`Internet Patents, 790 F.3d at 1346.
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`3. Alice Step Two—Evaluation of Abstract Claims for an Inventive Concept
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`A claim drawn to an abstract idea is not necessarily invalid if the claim’s limitations—
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`considered individually or as an ordered combination—serve to “transform the claims into a
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`patent-eligible application.” Content Extraction, 776 F.3d at 1348. Thus, the second step of the
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`Alice analysis (the search for an “inventive concept”) asks whether the claim contains an element
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`or combination of elements that “ensure[s] that the patent in practice amounts to significantly
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`more than a patent upon the [abstract idea] itself.” 573 U.S. at 218 (citation omitted).
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`The U.S. Supreme Court has made clear that transforming an abstract idea to a patent-
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`eligible application of the idea requires more than simply reciting the idea followed by “apply it.”
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`Id. at 221 (quoting Mayo, 566 U.S. at 72). In that regard, the Federal Circuit has repeatedly held
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`that “[f]or the role of a computer in a computer-implemented invention to be deemed meaningful
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`in the context of this analysis, it must involve more than performance of ‘well-understood, routine,
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`[and] conventional activities previously known to the industry.’” Content Extraction, 776 F.3d at
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`1347-48 (alteration in original) (quoting Alice, 134573 U.S. at 225); see also Mortg. Grader, 811
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`4 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 Commc’ns Inc., 59 F. Supp. 3d 974, 995
`(C.D. Cal. 2014) (viewing pencil-and-paper test as a “stand-in for another concern: that humans
`engaged in the same activity long before the invention of computers,” and concluding that test was
`unhelpful where “error correction codes were not conventional activity that humans engaged in
`before computers”).
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`Case No. 18-CV-06738-LHK
`AMENDED ORDER GRANTING MOTION TO DISMISS
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`F.3d at 1324-25 (holding that “generic computer components such as an ‘interface,’ ‘network,’
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`and ‘database’ . . . do not satisfy the inventive concept requirement”); Bancorp Servs., 687 F.3d at
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`1278 (“To salvage an otherwise patent-ineligible process, a computer must be integral to the
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`claimed invention, facilitating the process in a way that a person making calculations or
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`computations could not.”).
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`Likewise, “[i]t is well-settled that mere recitation of concrete, tangible components is
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`insufficient to confer patent eligibility to an otherwise abstract idea” where those components
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`simply perform their “well-understood, routine, conventional” functions. In re TLI Commc’ns
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`LLC, 823 F.3d at 613 (citation omitted); see also id. (ruling that “telephone unit,” “server,” “image
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`analysis unit,” and “control unit” limitations were insufficient to satisfy Alice step two where
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`claims were drawn to abstract idea of classifying and storing digital images in an organized
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`manner). “The question of whether a claim element or combination of elements is well-
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`understood, routine and conventional to a skilled artisan in