Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 1 of 31
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`Plaintiff,
`
`
`
`v.
`
`PHILIPS NORTH AMERICA LLC
`
`
`
`
`
`FITBIT, INC.,
`
`
`
`
`
`Defendant.
`
`C.A. No. 1:19-cv-11586-IT
`
`)
`)
`)
`)
`)
`)
`)
`)
`) LEAVE TO FILE EXCESS PAGES
`) GRANTED ON DEC. 10, 2019
`)
`)
`
`JURY TRIAL DEMANDED
`
`
`
`PLAINTIFF’S MEMORANDUM IN OPPOSITION
`TO DEFENDANT’S MOTION TO DISMISS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`
`
`
`
`
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 2 of 31
`
`
`
`
`
`I.
`
`II.
`
`
`
`
`
`
`
`
`
`III.
`
`
`
`
`
`
`
`
`
`IV.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...............................................................................................................1
`
`THE PATENTED TECHNOLOGY ....................................................................................3
`
`a. U.S. Patent No. 6,976,958 (the ’958 patent) ............................................................3
`
`b. U.S. Patent No. 8,277,377 (the ’377 patent) ............................................................4
`
`c. U.S. Patent No. 6,013,007 (the ’007 patent) ............................................................5
`
`d. U.S. Patent No. 7,088,233 (the ’233 patent) ............................................................6
`
`APPLICABLE LEGAL STANDARDS ..............................................................................7
`
`a. General Standards Applicable to Fed. R. Civ. P. 12(b)(6) ......................................7
`
`b. Patent Eligibility Under 35 U.S.C. § 101.................................................................7
`
`c. The “Abstraction Idea” Exception Should Be Construed Narrowly .......................8
`
`d. Deciding Patent Eligibility Under Fed. R. Civ. P. 12(b)(6) .....................................9
`
`ARGUMENT .......................................................................................................................9
`
`a.
`
`The ‘958 Patent ......................................................................................................10
`
`i.
`
`ii.
`
`
`
`iii.
`
`
`
`
`
`The Claims of the ’958 Patent are Directed to Specific
`Advancements Related to the Assignment of Functions of
`Components of a Computer System, Not an Abstract Idea at
`Alice Step One............................................................................................10
`
`
`
`The Federal Circuit Has Held Technological Advancements
`Like Those Claimed in the ’958 Patent Are Patent Eligible at
`Alice Step One............................................................................................11
`
`The Claims of the ‘958 Patent Are Not Merely A Collection
`of Routine or Conventional Components at Alice Step Two .....................12
`
`b.
`
`The ‘377 Patent ......................................................................................................13
`
`ii
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 3 of 31
`
`i.
`
`
`
`ii.
`
`
`
`iii.
`
`
`The Claims of the ’377 Patent are Directed to Advancements in the
`Arrangement of Computer Components, Not Abstract Ideas
`at Step One .................................................................................................13
`
`The Federal Circuit Has Held That Claims Directed To
`Advancements In Arrangement of Computer Components Are
`Patent Eligible at Step One ........................................................................15
`
`The Claims of the ’377 Patent At Least Recite Inventive
`Concepts That Render Them Patent Eligible at Alice Step Two ...............16
`
`c.
`
`The ‘233 Patent ......................................................................................................18
`
`
`
`i.
`
`
`
`
`ii.
`
`
`
`iii.
`
`
`The Claims of the ’233 are Directed To A System That Includes An
`Improved Security Mechanism For Governing Information
`Transmitted Between Devices, Not An Abstract Idea at
`Alice Step One............................................................................................18
`
`The Federal Circuit Has Held That Claims Directed To
`Advancements In Computer Security Are Patent Eligible at
`Alice Step One............................................................................................19
`
`The Claims of the ’233 Patent at Least Recite Inventive Concepts
`That Render The Patent Eligible at Alice Step Two ..................................20
`
`d.
`
`The “007 Patent......................................................................................................21
`
`
`
`
`
`
`
`
`
`i.
`
`
`
`ii.
`
`
`
`iii.
`
`
`The Claims of the ’007 Patent are Directed to An Improvement to
`GPS-Based Performance Monitors, Not an Abstract Idea at
`Alice Step One............................................................................................21
`
`The Federal Circuit Has Held Claims Directed To Systems That
`Improve Performance of Electronic Devices Patent Eligible at
`Alice Step One............................................................................................23
`
`The Claims of the ’007 Patent At Least Recite Inventive Concepts
`That Render Them Patent Eligible at Alice Step Two ...............................24
`
`CONCLUSION ..................................................................................................................25
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`V.
`
`
`
`
`
`iii
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 4 of 31
`
`
`
`
`Cases
`
`TABLE OF AUTHORITES
`
`PAGE(S)
`
`Aatrix Software, Inc. v. Green Shades Software, Inc,
`882 F.3d 1121 (Fed. Cir. 2018) .............................................................................................. 3, 9, 21, 25
`
`Alice Corp. v. CLS Bank Intern'l,
`573 U.S. 208 (2014) ...................................................................................................................... 7, 8, 9
`
`Amdocs (Israel) Ltd. v. Openet Telecom., Inc.,
`841 F.3d 1288 (Fed. Cir. 2016) ........................................................................................................... 16
`
`American Axle & Mfg. v. Neapco Holdings,
`939 F.3d 1355 (Fed. Cir. 2019) ....................................................................................................... 8, 23
`
`Ancora Techs., Inc. v. HTC Am., Inc.,
`908 F.3d 1348 (Fed. Cir. 2018) ........................................................................................... 9, 10, 11, 12
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2007) .............................................................................................................................. 7
`
`Bascom Global Internet Servs. v. AT&T Mobility LLC.,
`827 F.3d 1341 (Fed. Cir. 2016) ................................................................................................ 10, 15, 16
`
`Berkheimer v. HP, Inc.,
`881 F.3d 1360 (Fed. Cir. 2018) .............................................................................................................. 3
`
`Cardigan Mountain Schl. v. N.H. Ins. Co.,
`787 F.3d 82 (1st Cir. 2019) .................................................................................................................... 7
`
`Cellspin Soft, Inc. v. Fitbit, Inc.,
`927 F.3d 1306 (Fed. Cir. 2019) ........................................................................................................ 2, 10
`
`ChargePoint, Inc. v. SemaConnect, Inc.,
`920 F.3d 759 (Fed. Cir. 2019) .............................................................................................................. 23
`
`Content Extraction & Transmission, LLC v. Wells Fargo Bank, N.A.,
`776 F.3d 1343 (Fed. Cir. 2014) ............................................................................................................ 11
`
`Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.,
`880 F.3d 1356 (Fed. Cir. 2018) ...................................................................................................... 23, 24
`
`Diamond v. Chakrabarty,
`447 U.S. 303 (1980) ............................................................................................................................... 8
`
`iv
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 5 of 31
`
`
`
`Electric Power Group, LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016) ............................................................................................................ 15
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016) .................................................................................................... 8, 9, 22
`
`Finjan, Inc. v. Blue Coat Systems, Inc.,
`879 F.3d 1299 (Fed. Cir. 2018) ............................................................................................................ 10
`
`In re TLI Comms. LLC Patent Litigation,
`135 S.Ct. 831 (2015) .............................................................................................................................. 2
`
`Interval Licensing LLC v. AOL, Inc.,
`896 F.3d 1335 (Fed. Cir. 2018) .............................................................................................................. 9
`
`Koninklijke KPN NV v. Gemalto M2M GmBH,
`942 F.3d 1143 (Fed. Cir. 2019) .................................................................................................... 2, 9, 20
`
`McRo, Inc. v. Bandai Namco Games Am., Inc.
`837 F.3d 1299 (Fed. Cir. 2016) ............................................................................................................ 11
`
`MyMail, LTD. v. ooVoo, LLC,
`934 F.3d 1373 (Fed. Cir. 2019) .............................................................................................................. 8
`
`Smart Systems Innovations, LLC v. Chicago Transit Authority,
`873 F.3d 1364 (Fed. Cir. 2017) ........................................................................................................ 8, 23
`
`Teva Pharms. USA v. Sandoz, Inc.,
`135 S. Ct. 831 (2015) ............................................................................................................................. 2
`
`Thales Visionix, Inc. v. United States,
`850 F.3d 1343 (Fed. Cir. 2017) ............................................................................................................ 24
`
`Two Way Media v. Comcast Cable Commc’ns., LLC,
`874 F.3d 1329 (Fed. Cir. 2017) ...................................................................................................... 19, 20
`
`Uniloc USA, Inc. v. ADP, LLC
`772 Fed. Appx. 80 (Fed. Cir. 2019) ..................................................................................................... 10
`
`v
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 6 of 31
`
`
`
`I.
`
`INTRODCUTION
`
`Philips North America, LLC (“Philips”) filed its Original Complaint on July 22, 2019,
`
`alleging that Fitbit, Inc. (“Fitbit”) willfully infringes claims of four Philips patents from three
`
`different families. (D.I. 1.) The Original Complaint stretched nearly fifty pages and included
`
`dozens of paragraphs explaining how each claim recites improved computer functionality, that it
`
`does not consist of components that were conventional, and that it does not pre-empt any field.
`
`(See id. at ¶¶ 56-63, 74-81, 92-99, 109-114.) Fitbit moved to dismiss, asking the Court to
`
`disregard the allegations and find each claim invalid under 35 U.S.C. § 101. (See D.I. 19.)
`
`To remove any doubt as to patent eligibility, Philips filed an Amended Complaint that
`
`greatly expanded the pleadings on the factual underpinnings supporting eligibility of the claims.
`
`For example, the Amended Complaint adds extensive explanation on how the claims would be
`
`understood by a person of ordinary skill in the art (essential to claim construction), meaning of
`
`the patents’ prosecution histories reflecting the state of the art and the nature of the claimed
`
`advancements, as well as information concerning the manner in which the claims were
`
`examined. (See D.I. 25 at ¶¶ 59-64, 83-88, 107-113, 130-34.) At the scheduling conference, this
`
`Court cautioned Fitbit about filing a renewed motion to dismiss in light of the Amended
`
`Complaint noting “if there is a dispute here, it can’t be framed in a motion to dismiss” and “this
`
`isn’t an opportunity for claim construction.” (Dec. 2, 2019 Hearing Tr. at pp. 4, 6.) Fitbit,
`
`nevertheless, renewed its motion, arguing that Philips’ pleadings are “immaterial to the § 101
`
`inquiry” and the Court should disregard them. (D.I. 34 at 1.)
`
`Fitbit’s renewed motion not only asks the Court to engage in extensive fact-finding, but
`
`also to disregard Philips well-pled allegations in favor of Fitbit’s characterizations. This is
`
`literally the opposite of the approach that the Court is required to take at the pleading stage, and
`
`
`
`1
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 7 of 31
`
`Fitbit’s motion should be denied for this reason alone. And even putting the detailed pleadings
`
`aside, Fitbit’s motion should be denied because Fitbit misconstrues the claims of each patent,
`
`which are directed to concrete advancements over the prior art that not only improved the
`
`physical systems, but represented advancements to the way they function. Fitbit simply ignores
`
`what the claims actually say and asserts that they should be interpreted well beyond their
`
`limitations to encompass broad concepts such as “data transfer” and “collecting and analyzing
`
`data” under Alice step one. The claims simply are not that broad.
`
`The Federal Circuit has warned in regard to Alice step one that “we must be careful to
`
`avoid oversimplifying the claims.” In re TLI Comms. LLC Patent Litigation, 823 F.3d 607, 611
`
`(Fed. Cir. 2016). Claims are to be understood from the perspective of one of ordinary skill in the
`
`art, a factual issue, as pled in the complaint. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct.
`
`831, 841 (2015) (“The district judge, after deciding the factual dispute, will then interpret the
`
`patent claim in light of the facts as he has found them.”). Without any supporting record, Fitbit
`
`asks this court to apply a level of generality that is divorced from the claim language. That is not
`
`how the Court should conduct the analysis, particularly at the pleading stage. Koninklijke KPN
`
`NV v. Gemalto M2M GmBH, 942 F.3d. 1143 (Fed. Cir. Nov. 15, 2019) (rejecting overbroad
`
`interpretation and reversing district court).
`
`It bears emphasizing that Fitbit recently led another district court down this very path.
`
`Fitbit moved to dismiss, even though the complaint identified ways in which its application of
`
`capturing, transferring, and publishing data was unconventional. Cellspin Soft, Inc. v. Fitbit,
`
`Inc., 927 F.3d 1306 (Fed. Cir. 2019). At Fitbit’s urging, the district court discounted the
`
`pleadings, found the claims ineligible, and dismissed. See id. The Federal Circuit reversed,
`
`holding that “plausible and specific factual allegations that aspects of the claims are inventive are
`
`2
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 8 of 31
`
`sufficient” to survive a motion to dismiss. Id. The Court further held that “the specification
`
`need not expressly list all the reasons why [a] claimed structure is unconventional.” Id.
`
`Philips respectfully submits that the Federal Circuit’s decisions in Aatrix Software, Inc. v.
`
`Green Shades Software, Inc. 882 F.3d 1121 (Fed. Cir. 2018) and Berkheimer v. HP, Inc., 881
`
`F.3d 1360 (Fed. Cir. 2018), on which the Cellspin court relied, require denial of Fitbit’s motion.
`
`Philips’ Amended Complaint includes well-pled factual allegations supporting the conclusion
`
`that each claim is not directed to an abstract idea, that it is directed to a technological innovation
`
`that improves computer and/or networking functionality, and that it does not pre-empt any field.
`
`
`
`II. THE PATENTED TECHNOLOGY
`
`The patents in this case are directed to a diverse collection of inventions from different fields.
`
`Each claim must be analyzed individually, and in the context of Philips’ well-pled allegations.
`
`
`
`a. U.S. Patent No. 6,976,958 (“the ’958 patent”)
`
`The ’958 patent issued on December 20, 2005, with a priority date of December 15,
`
`2000. (Id. ¶¶ 145, 48.) It is generally directed to improvements in health monitoring, but claim
`
`17 is specifically directed to the preservation of health information in the event of an interruption
`
`of the wireless connection between an internet-enabled web device and a server. (Id. at ¶ 129.)
`
`
`
`Philips’ Amended Complaint explains that “health monitoring devices prior to [] the ’958
`
`patent were either limited to a single location or, if portable, were extremely limited in their
`
`functionality due to constraints of wireless devices related to computing capacity, processing
`
`power and user interface.” (Id.) The patent overcame these problems by “providing an internet-
`
`enabled wireless web device running an application functioning to accept inputs of a health
`
`parameter from a health monitoring device relating a health condition, and in the event of an
`
`interruption of the wireless connection between the device and the server, the internet-enabled
`
`3
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 9 of 31
`
`wireless web device being configured to store the health parameter in a memory.” (Id.)
`
`In view of the technological nature of the innovation, the Amended Complaint explains
`
`that “the claimed inventions improve functionality of health monitoring devices by enabling for
`
`the preservation and storage of health information in the event of an interruption of the wireless
`
`connection between the internet-enabled wireless web device and the server.” (Id.) The
`
`Amended Complaint further states that the claims “address difficult technical challenges in
`
`health monitoring of persons utilizing computer and networking capabilities and functionality,”
`
`and “[t]he claimed inventions were not well known, routine, or conventional at the time of the
`
`invention, nearly twenty years ago, and represent specific improvements over the prior art and
`
`prior existing systems and methods.” (Id. at ¶ 128.) In also explains that “[a] person having
`
`ordinary skill in the art would understand that the separate claims of the ‘958 patent did not and
`
`do not pre-empt any field,” at least because “the ’958 patent itself recognizes that the collection
`
`and storage of health data can be can be accomplished without the new and useful techniques for
`
`storing health data that are claimed in the ’958 patent.” (Id. at ¶ 134.)
`
`b. U.S. Patent No. 8,277,377 (“the ’377 patent”)
`
`The ’377 patent issued on October 2, 2012 and claims a priority date of December 17,
`
`1999. (D.I. 25 ¶¶ 43, 107; Ex. C.) Philips’ Amended Complaint explains that prior to the ’377
`
`patent “medical or health information could be stored on computer media such as a compact disk
`
`and could thereby be accessed on a home computer system,” but “this passive approach to the
`
`communication of health or medical information was difficult to set up for many individuals, it
`
`was expensive, and its interactivity was limited.” (See id. ¶ 105; Ex. C col. 1, ll. 54-67.) It
`
`further explains that the patent “solved the problems of the prior art by providing an apparatus
`
`for monitoring exercise with wireless internet connectivity including [] downloading an
`
`4
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 10 of 31
`
`application to a web-enabled wireless phone, using the application to receive data indicating a
`
`physiological status of an individual, sending the exercise-related information to an internet
`
`server, and receiving a calculated response from the server where the response is associated with
`
`a calculation performed by the server based on the exercise-related information.” (Id. ¶ 109.)
`
`The Amended Complaint also identifies technical challenges overcome by the inventor of the
`
`’377 patent. Quoting the prosecution history, the Amended Complaint provides:
`
`[T]he relatively small amount of memory and processing capability provided on a
`wireless phone in the 1990s, as compared to the present time, severely limited the
`functionality of applications running on the wireless phone, especially in terms of
`computing capacity, processing power, and user interface. In the current claimed
`systems, e.g., the application program downloaded from a server is thus designed
`to suit the constraints of the small display screens of a mobile phone. An
`illustration of the display screen of an extant web-enabled wireless phone at the
`time of the invention is provided in the Appellant’s provisional filing, which is
`included by way of reference. By providing significant application functionality
`on the server, less memory and processing capabilities become necessary on the
`wireless phone; thus freeing memory and processing power for an interactive user
`interface and for receiving the exercise related data. The external application
`running on the internet server and external data storage were other examples of
`way employed to overcome the computing limitations of a mobile phone
`
`(Id. ¶ 111.) Thus, the invention “overcome[s] the limitations resulting from reliance on local
`
`processing … [and] eliminate[s] the location-based restraints of prior art systems by arranging
`
`the data processing components such that the data analysis is offloaded to a server.” (Id.)
`
`
`
`c. U.S. Patent No. 6,013,007 (“the ’007 patent”)
`
`The ’007 patent issued on January 11, 2000 from an application filed on March 26, 1998,
`
`and the patent describes a GPS-based athletic performance monitor. (D.I. 25 ¶ 39; Ex. A.) As
`
`explained in Philips’ Amended Complaint, prior to the ’007 patent athletic tracking devices were
`
`limited to stop watches, heartrate monitors and pedometers; the devices did not give athletic
`
`performance feedback using time-stamped waypoints. (See D.I. 25 ¶ 57.) GPS devices were
`
`limited to navigation uses, and had a visual display to show current location, destination, and
`
`5
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 11 of 31
`
`instructions for traveling to a pre-selected location. (Id. ¶ 63.) They were not capable of
`
`presenting information to an athlete during exercise, and they did not present athletic
`
`performance feedback data over a headset like claim 23 of the ’007 patent. (Id.)
`
`The ’007 patent’s innovations improved the functionality of existing athletic monitors,
`
`because they allowed for a device that could provide accurate athletic performance data to an
`
`athlete and make real-time recommendations to an athlete. (Id. ¶ 65.) The innovations also
`
`improved existing GPS monitors by introducing audio feedback, thereby eliminating the cost and
`
`complexity of the visual display and improving safety by allowing a means to provide athletic
`
`performance feedback without distracting the athlete during an exercise session. (Id. ¶¶ 65-66.)
`
`
`
`d. U.S. Patent No. 7,088,233 (“the ’233 patent”)
`
`The ’233 patent issued on August 8, 2006, and it claims priority to applications dating to
`
`October 23, 1998. (D.I. 25 ¶¶ 41, 83; Ex. B.) The patent claims an improved personal
`
`physiological system that is friendly to a mobile user, inexpensive, and provides interoperability
`
`between wireless technologies, communication network providers, and medical and public
`
`systems. (D.I. 25 ¶¶ 83-85.) The Amended Complaint explains that prior devices did not
`
`provide sufficient protection for personal information, and the patented invention improved
`
`existing systems through a security mechanism that governs information transmitted between a
`
`first device and a second device. (D.I. 25 ¶ 85.) It also explains that the inventions of the ’233
`
`patent solved the problems of the prior art by providing a distributed personal health
`
`communication system wherein the transmission of information is dictated not by the underlying
`
`communication link (e.g. Bluetooth), but based on an additional security mechanism. (Id.)
`
` For these reasons, Philips’ Amended Complaint explains that “the claims of the ‘233 patent
`
`would be understood by a person having ordinary skill in the art to recite concrete advancements
`
`6
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 12 of 31
`
`in technology pertaining to an improved personal medical communications system having a
`
`personal device with at least one detector input and a bi-directional wireless communication
`
`module, a second device also with a bi-directional wireless communication module, and a
`
`security mechanism which governs the transmission of information to and from a first personal
`
`device.” (Id. ¶ 86.) It further explains that a person of ordinary skill would have understood that
`
`the inventions are not directed generically to the idea of secure data transfer, but to a security
`
`mechanism for governing information transmitted between a first device and a second device.
`
`(Id. at ¶ 86.) It also explains that prior wireless devices were not designed to be included in
`
`personal medical communication systems, and they did not combine short range wireless
`
`communication with a security mechanism. (Id. at ¶ 87.)
`
`III. APPLICABLE LEGAL STANDARDS
`
`
`a. General Standards Applicable to Fed. R. Civ. P. 12(b)(6)
`
`
`
`In the First Circuit, to defeat a motion to dismiss under Rule 12(b)(6), “a plaintiff need
`
`not demonstrate that it is likely to prevail on its claim.” Cardigan Mountain Schl. v. N.H. Ins.
`
`Co., 787 F.3d 82, 84 (1st Cir. 2015) (internal quotation marks omitted). Rather, the complaint
`
`need include only enough factual detail to make the asserted claim “plausible on its face.”
`
`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). In resolving a motion to dismiss, the court “should
`
`assume [the] veracity” of “well-pleaded factual allegations,” and then “determine whether they
`
`plausibly give rise to an entitlement to relief.” Id. at 679.
`
`
`
`b. Patent Eligibility Under 35 U.S.C. § 101
`
`The Supreme Court has fashioned a two-step test to evaluate patent eligibility under 35
`
`U.S.C. § 101. Alice Corp. v. CLS Bank Intern’l, 573 U.S. 208, 216-18 (2014). Under Alice step
`
`one the court must “consider whether a claim is directed to a patent-ineligible concept such as an
`
`7
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 13 of 31
`
`abstract idea, law of nature, or natural phenomenon.” MyMail, LTD. v. ooVoo, LLC, 934 F.3d
`
`1373, 1379 (Fed. Cir. 2019). If each claim is so broad to be directed to a patent-ineligible
`
`concept, the court moves to Alice step 2 and looks “more precisely at what the claim elements
`
`add” to determine if there is an “ ‘inventive concept’ in the application of the ineligible matter to
`
`which … the claim is directed.” Id. (quoting Alice, 573 U.S. at 217).
`
`
`
`c. The “Abstract Idea” Exception Should Be Construed Narrowly
`
`Congress envisioned under 35 U.S.C. 101 that eligibility extends to “anything under the
`
`sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). Judicially
`
`created exceptions to Congress’s intent must be interpreted narrowly, and the Supreme Court in
`
`Alice cautioned that courts should “tread carefully in construing this exclusionary principle.”
`
`Alice, 573 U.S. at 217. Nevertheless, the Alice test has proven nearly impossible to apply in a
`
`coherent manner. Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364,
`
`1377 (Fed. Cir. 2017) (Judge Linn: the “problem” with the test “is that it is indeterminate”);
`
`Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1348 (Fed. Cir. 2018) (Judge Plager: the
`
`test is “incoherent body of doctrine” that in “near impossible to know with certainty whether the
`
`invention is or is not patent eligible”); American Axle & Mfg. v. Neapco Holdings, 939 F.3d
`
`1355, 1375 (Fed. Cir. 2019) (Judge Moore: referencing “validity goulash”); Berkheimer v. HP
`
`Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Judges Lourie and Newman: “I believe the law needs
`
`clarification by higher authority, perhaps by Congress, to work its way out of what so many in
`
`the innovation field consider are § 101 problems.”)
`
`Predominate among the problems is that “describing the claims at such a high level of
`
`abstraction and untethered from the language of the claims all but ensures that the exceptions to
`
`§ 101 swallow the rule.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016);
`
`8
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 14 of 31
`
`see also McRo, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016).
`
`This is the first place where Fitbit’s Motion goes astray. Fitbit repeatedly asks this Court
`
`to interpret the claims as simply directed to “data transfer” or “collecting and analyzing data” –
`
`language that is not even found in the claims. Fitbit also relies heavily on the Electric Power
`
`case, which was distinguished under current jurisprudence as not addressing the specific claimed
`
`improvements, and it did not deal with detailed pleadings supporting eligibility like the present
`
`case. See Koninklijke KPN, 942 F.3d. at 1152. Under 35 U.S.C. §282 claims are to be addressed
`
`independently of each other based on their own claim limitations, not generalizations of their
`
`language. 35 U.S.C. §282; see also Aatrix, 890 F.3d at 1356 (Fed. Cir. 2018).
`
`d. Deciding Patent Eligibility Under Fed. R. Civ. P. 12(b)(6)
`
`
`Patent eligibility under § 101 is a question of law often involving underlying questions of
`
`fact. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018). Accordingly,
`
`patent eligibility may be resolved on a motion to dismiss only when there are no factual
`
`allegations that, if taken as true, prevent resolving the eligibility question as a matter of law.
`
`Aatrix, 882 F.3d at 1125. Factual allegations that preclude resolution of the patent eligibility
`
`question on the pleadings include whether the claims (properly interpreted) are directed to
`
`abstract ideas and whether “the claim elements or the claimed combination are well-understood,
`
`routine, [or] conventional.” Id.; see also Koninklijke KPN, 942 F.3d. at 1152-53.
`
`IV. ARGUMENT
`
`
`Applying these principles and recent Federal Circuit case law to the detailed allegations in
`
`Philips’ Amended Complaint compels that conclusion that no claim is directed to ineligible
`
`subject matter. The Federal Circuit has held that inventions solving problems related to
`
`computer or network functionality are patent eligible. See Ancora Techs, Inc. v. HTC Am., Inc.,
`
`9
`
`

`

`Case 1:19-cv-11586-IT Document 36 Filed 12/31/19 Page 15 of 31
`
`908 F.3d 1348-49 (Fed. Cir. 2018) (finding claim directed at improving computer security by
`
`storing a license record in a specific memory location passes step one); Finjan, Inc. v. Blue Coat
`
`Systems, Inc. 879 F.3d 1299, 1304-06 (Fed. Cir. 2018) (finding claims directed at improving
`
`computer security by “generating a security profile that identifies suspicious code and linking it
`
`to a downloadable” passes step one). The Federal Circuit has held that claims using off-the shelf
`
`components meet step one when they are focused on “a particular improvement in how [the
`
`function] is done.” Uniloc USA, Inc. v. ADP, LLC, 772 Fed. Appx. 890, 897 (Fed. Cir. 2019).
`
`If the analysis proceeds to step two, the Federal Circuit has held that the inventive concept
`
`required “can be found in the non-conventional and non-generic arrangement of known,
`
`conventional pieces.” Bascom Global Internet Servs. V. AT&T Mobility LLC, 827 F.3d 1341,
`
`1350 (Fed. Cir. 2016). And the Federal Circuit recently held that a patent to an unconventional
`
`way to capture, transfer, and publish data was inventive and, therefore, patent eligible. Cellspin,
`
`927 F.3d at 1316-18. Fitbit has failed to show by clear and convincing evidence that any patent-
`
`in-suit should be declared invalid on the current record. Its motion should be DENIED.
`
`a. The ’958 Patent
`
`
`i. The Claims of the ’958 Patent are Directed to Specific Advancements
`Related to the Assignment of Functions of Components of a Computer
`System, Not an Abstract Idea at Alice Step One.
`
`
`
`
`
`Fitbit argues that the invention of the ’958 patent is nothing more than “collecting and
`
`storing dat