Match Group, LLC v. Bumble Trading Inc.

Western District of Texas, txwd-6:2018-cv-00080

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EXHIBIT 1 Case 6:18-cv-00080-ADA-JCM In re TLI Communications LLC Patent Litigation, 823Document 34-1 F.3d 607 (2016) Filed 11/08/18 Page 2 of 9 118 U.S.P.Q.2d 1744 [2] recitation of concrete, tangible components did not bring abstract idea encompassed by patent into realm of KeyCite Yellow Flag - Negative Treatment patentability. Distinguished by Visual Memory LLC v. NVIDIA Corporation, Fed.Cir.(Del.), August 15, 2017 823 F.3d 607 Affirmed. United States Court of Appeals, Federal Circuit. In re TLI COMMUNICATIONS West Headnotes (13) LLC PATENT LITIGATION. TLI Communications LLC, Plaintiff–Appellant [1] Courts v. Particular questions or subject matter AV Automotive, L.L.C., Hall Automotive, Federal Circuit applies regional circuit law to LLC, Yahoo! Inc., Tumblr, Inc., Twitter, Inc., the review of motions to dismiss for failure to Pinterest, Inc., Imgur LLC, Shutterfly, Inc., state a claim. Fed.Rules Civ.Proc.Rule 12(b) TripAdvisor Inc., TripAdvisory LLC, Snapchat (6), 28 U.S.C.A. Inc., Capital One Financial Corporation, Capital One, N.A., Capital One Services, 4 Cases that cite this headnote LLC, Vine Labs, Inc., Defendants–Appellees Apple Inc., Whi Inc., Google, Inc., Facebook, [2] Federal Courts Inc., Instagram, LLC, Yelp, Inc., Dropbox Pleading Inc., IAC/InterActiveCorp, CityGrid Fourth Circuit reviews challenges to a Media LLC, Vimeo LLC, Defendants. dismissal for failure to state a claim de novo. Fed.Rules Civ.Proc.Rule 12(b)(6), 28 Nos. 2015–1372, 2015–1376, 2015–1377, 2015–1378, U.S.C.A. 2015–1379, 2015–1382, 2015–1383, 2015–1384, 2015–1385, 2015–1417, 2015–1419, 2015–1421. Cases that cite this headnote | May 17, 2016. [3] Patents Synopsis Eligible subject matter Background: In related actions consolidated for pretrial Federal Circuit will review de novo a district purposes in multidistrict litigation, patent owner accused court's patent eligibility determination. 35 numerous social media website operators of infringing U.S.C.A. § 101. patent relating to method and system for taking, 5 Cases that cite this headnote transmitting, and organizing digital images. The United States District Court for the Eastern District of Virginia, T.S. Ellis, III, J., 87 F.Supp.3d 773, granted operators' [4] Patents motion to dismiss on basis of invalidity. Patent owner Laws of nature, natural phenomena, and appealed. abstract ideas; fundamental principles Laws of nature, natural phenomena, and abstract ideas are not patentable. 35 U.S.C.A. Holdings: The Court of Appeals, Hughes, Circuit Judge, § 101. held that: 20 Cases that cite this headnote [1] patent was directed to abstract idea of classifying and storing digital images in organized manner, [5] Patents © 2018 Thomson Reuters. No claim to original U.S. Government Works. 1 Case 6:18-cv-00080-ADA-JCM In re TLI Communications LLC Patent Litigation, 823Document 34-1 F.3d 607 (2016) Filed 11/08/18 Page 3 of 9 118 U.S.P.Q.2d 1744 Laws of nature, natural phenomena, and in nascent but well-known environment, abstract ideas; fundamental principles without any claim that invention reflected any Patents inventive solution to problem presented. 35 Use or operation of machine or U.S.C.A. § 101. apparatus as affecting process; "machine or 55 Cases that cite this headnote transformation" test To determine patent eligibility, the court must first determine whether the claims at issue are [8] Patents directed to a patent-ineligible concept, such Computers and Software as an abstract idea, and if so, the court must When performing a patent eligibility analysis, then consider the elements of each claim both it is a relevant inquiry when determining individually and as an ordered combination whether the patent claims at issue are directed to determine whether the additional elements to an abstract idea to ask whether the claims transform the nature of the claim into a are directed to an improvement to computer patent-eligible application. 35 U.S.C.A. § 101. functionality versus being directed to an abstract idea. 35 U.S.C.A. § 101. 67 Cases that cite this headnote 119 Cases that cite this headnote [6] Patents Laws of nature, natural phenomena, and [9] Patents abstract ideas; fundamental principles Use or operation of machine or When performing a patent eligibility analysis, apparatus as affecting process; "machine or to determine whether the patent claims transformation" test at issue are directed to an abstract idea, Mere recitation of concrete, tangible requires the court to be careful to avoid components is insufficient to confer patent oversimplifying the claims because, at some eligibility to an otherwise abstract idea; rather, level, all inventions embody, use, reflect, the components must involve more than rest upon, or apply laws of nature, natural performance of well-understood, routine, phenomena, or abstract ideas. 35 U.S.C.A. § conventional activities previously known to 101. the industry. 35 U.S.C.A. § 101. 74 Cases that cite this headnote 40 Cases that cite this headnote [7] Patents [10] Patents Business methods; Internet applications Business methods; Internet applications Patent relating to method and system for Recitation of concrete, tangible components, taking, transmitting, and organizing digital including telephone unit, server, image images was directed to abstract idea of analysis unit, and control unit in patent classifying and storing digital images in relating to method and system for taking, organized manner, thus favoring finding transmitting, and organizing digital images, of invalidity, even though representative did not add any inventive concept sufficient claim required concrete, tangible components to bring into realm of patentability such as "telephone unit" and "server," abstract idea encompassed by patent, i.e., where specification made clear that recited classifying and storing digital images in physical components merely provided generic organized manner, where, according to environment in which to classify and store specification, telephone unit simply provided digital images, patent claims were directed environment for carrying out classification to use of conventional or generic technology and storage functions, server was merely © 2018 Thomson Reuters. No claim to original U.S. Government Works. 2 Case 6:18-cv-00080-ADA-JCM In re TLI Communications LLC Patent Litigation, 823Document 34-1 F.3d 607 (2016) Filed 11/08/18 Page 4 of 9 118 U.S.P.Q.2d 1744 generic computer that administered digital LLC, IAC/InterActiveCorp, Imgur LLC, Pinterest, images using known arbitrary data bank Inc., Shutterfly, Inc., Snapchat Inc., TripAdvisor Inc., system, image analysis unit predictably TripAdvisory LLC, Tumblr, Inc., Twitter, Inc., Vimeo analyzed quality of digital images, and control LLC, Vine Labs, Inc., Yahoo! Inc. Also represented by unit predictably controlled various aspects of Zac Cox, Alexandra Helen Moss. claimed functionality. 35 U.S.C.A. § 101. Joshua Bryson Brady, Williams Mullen, PC, McLean, 12 Cases that cite this headnote VA, for defendants-appellees AV Automotive, LLC, Hall Automotive, LLC. [11] Patents Robert A. Angle, Troutman Sanders LLP, Richmond, Computers and Software VA, for defendants-appellees Capital One Financial For the role of a computer in a computer- Corporation, Capital One, N.A., Capital One Services, implemented invention to be deemed LLC. meaningful in the context of determining patent eligibility, it must involve more than Before DYK, SCHALL, and HUGHES, Circuit Judges. performance of well-understood, routine, and Opinion conventional activities previously known to the industry. 35 U.S.C.A. § 101. HUGHES, Circuit Judge. 22 Cases that cite this headnote TLI Communications LLC alleges that the defendants infringe a patent relating to a method and system for [12] Patents taking, transmitting, and organizing digital images. The Computers and Software district court dismissed the complaint after concluding that the patent-in-suit fails to claim patent-eligible subject Just as steps that do nothing more than spell matter under 35 U.S.C. § 101, and that, in the alternative, out what it means to "apply it on a computer" claims 1, 25, and their dependent claims are invalid for cannot confer patent eligibility, steps that failing to recite sufficient structure as required by 35 generically spell out what it means to "apply U.S.C. § 112 ¶ 6. Because we agree with the district it on a telephone network" also cannot confer court that the patent-in-suit claims no more than the patent eligibility. 35 U.S.C.A. § 101. abstract idea of classifying and storing digital images in an 2 Cases that cite this headnote organized manner, we affirm the district court's judgment and do not reach the § 112 ¶ 6 issue. [13] Patents In general; utility I US Patent 6,038,295. Invalid. In 2014, TLI Communications LLC (TLI) filed a series Cases that cite this headnote of actions in the District of Delaware and the Eastern District of Virginia, alleging that the defendants infringed U.S. Patent No. 6,038,295 (the ′295 patent) by making, selling, and/or using products and services that allow Attorneys and Law Firms uploading of digital photos from a mobile device, such as a *609 Robert Alan Whitman, Mishcon de Reya New cell phone. The Judicial Panel on Multidistrict Litigation York LLP, New York, NY, argued for plaintiff-appellant. consolidated the cases for pre-trial purposes in the Eastern Also represented by Michael DeVincenzo, Mark Stewart District of Virginia. Raskin, Charles Wizenfeld. The ′295 patent "relates generally to an apparatus for Mark A. Lemley, Durie Tangri LLP, San Francisco, recording of a digital image, communicating the digital CA, argued for defendants-appellees CityGrid Media image from the recording device to a storage device, and © 2018 Thomson Reuters. No claim to original U.S. Government Works. 3 Case 6:18-cv-00080-ADA-JCM In re TLI Communications LLC Patent Litigation, 823Document 34-1 F.3d 607 (2016) Filed 11/08/18 Page 5 of 9 118 U.S.P.Q.2d 1744 to administering the digital image in the storage device." ′295 patent, col. 1 ll. 7–10. The specification notes that a extracting classification information which "wide variety of data types" can be transmitted, including characterizes the digital images from the received audio and image stills. Id. at col. 1 ll. 15–26. Moreover, data, and "[s]o called cellular telephones may be utilized for image storing the digital images in the server, said step of transmissions," id. at col 1 ll. 31–34, and, at the time of the storing taking into consideration the classification invention, it was known how to "digitize, compress and information. transmit individual still pictures, such as photographs," id. at col 1 ll. 35–42. Further, the specification recognizes that Id. at col. 10 ll. 1–17. Independent claims 1 and 25 recite the prior art taught "[a]n image and audio communication substantially the same concept but do so in the context system having a graphical annotation capability ... in of an apparatus or system. Claim 1 includes a "means for which voice, data and image communications are used in allocating classification information prescribed by a user telephone systems." Id. at col 1 ll. 52–59. But, "[w]hen a of said at least one telephone unit to characterize digital large number of digital images are recorded and are to be images obtained by said digital pick up unit." Likewise, archived in a central computer unit, then the organization claim 25 recites a "means ... to allocate information in the of the data base becomes a *610 problem." Id. at col 1 ll. corresponding digital still image data." Claims 10 and 11 43–45. "In particular, the problems of locating the data of add an "image analysis unit" and a "control unit" to the an image data file increase as the number of images to be features of claim 1. archived increases." Id. at col. 1 ll. 46–48. The invention seeks to solve this problem "by providing for recording, The defendants filed a motion to dismiss for failure to administration and archiving of digital images simply, fast state a claim, arguing that the ′295 patent is drawn and in such way that the information therefore may be to patent-ineligible subject matter. The district court easily tracked." Id. at col. 1 ll. 64–66. agreed, concluding that the claims are directed to "the abstract idea of taking, organizing, classifying, and storing More specifically, the invention teaches manually or photographs." J.A. 16. The district court declined to give automatically assigning "classification data," such as patentable weight to the claims' recitation of a telephone a date or timestamp, to digital images and sending unit or a server, or to the "means for allocating" limitation those images to a server. The server then extracts the in claims 1 and 25. As a result, the district court granted classification data and stores the digital images, "taking the defendants' motion to dismiss. into consideration the classification information." Id. at col. 2 ll. 35–45. Claim 17 is representative: TLI appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). 17. A method for recording and administering digital images, comprising the steps of: recording images using a digital pick up unit in a II telephone unit, [1] [2] [3] We apply regional circuit law to the review storing the images recorded by the digital pick up unit of motions to dismiss for failure to state a claim under in a digital form as digital images, Rule 12(b)(6). Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1346 transmitting data including at least the digital images (Fed.Cir.2014). The Fourth Circuit reviews challenges to and classification information to a server, wherein a dismissal for failure to state a claim de novo. Burbach said classification information is prescribable by a Broad. Co. of Del. v. Elkins Radio Corp., 278 F.3d user of the telephone unit for allocation to the digital 401, 406 (4th Cir.2002). We review the district court's images, patent eligibility determination under § 101 de novo. OIP receiving the data by the server, Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed.Cir.2015). © 2018 Thomson Reuters. No claim to original U.S. Government Works. 4 Case 6:18-cv-00080-ADA-JCM In re TLI Communications LLC Patent Litigation, 823Document 34-1 F.3d 607 (2016) Filed 11/08/18 Page 6 of 9 118 U.S.P.Q.2d 1744 [4] [5] A patent may be obtained for "any new and reduced to underlying principles of nature which, once useful process, machine, manufacture, or composition of known, make their implementation obvious."). However, matter, or any new and useful improvement thereof." not every claim that recites concrete, tangible components *611 35 U.S.C. § 101. The Supreme Court has "long escapes the reach of the abstract-idea inquiry. See, e.g., held that this provision contains an important implicit Alice, 134 S.Ct. at 2360 (claims that recite general-purpose exception[:] Laws of nature, natural phenomena, and computer components are nevertheless "directed to" an abstract ideas are not patentable." Ass'n for Molecular abstract idea); Content Extraction, 776 F.3d at 1347 Pathology v. Myriad Genetics, Inc., ––– U.S. ––––, 133 (claims reciting a "scanner" are nevertheless directed to S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) (quoting Mayo an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Collaborative Servs. v. Prometheus Labs., Inc., ––– U.S. Serv. Inc., 811 F.3d 1314, 1324–25 (Fed.Cir.2016) (claims ––––, 132 S.Ct. 1289, 1293, 182 L.Ed.2d 321 (2012)). reciting an "interface," "network," and a "database" are Under the now familiar two-part test described by the nevertheless directed to an abstract idea). Supreme Court in Alice, "[w]e must first determine whether the claims at issue are directed to a patent- [7] On its face, representative claim 17 is drawn to ineligible concept," such as an abstract idea. Alice Corp. the concept of classifying an image and storing the Pty. Ltd. v. CLS Bank Int'l, ––– U.S. ––––, 134 S.Ct. image based on its classification. While claim 17 requires 2347, 2355, 189 L.Ed.2d 296 (2014). If so, we must then concrete, tangible components such as "a telephone "consider the elements of each claim both individually unit" and a "server," the specification makes clear and 'as an ordered combination' to determine whether the that the recited physical components merely provide a additional elements 'transform the nature of the claim' generic environment in which to carry out the abstract into a patent-eligible application." Id. (quoting Mayo, 132 idea of classifying and storing digital images in an S.Ct. at 1298, 1297). For the reasons set forth below, organized manner. And the specification's emphasis we find that the claims are directed to the abstract idea that the present invention "relates to a method for of classifying and storing digital images in an organized recording, communicating and administering [a] digital manner and fail to add an inventive concept sufficient to image" underscores that claim 17 is directed to an confer patent eligibility. abstract concept. ′295 patent, col. 1 ll. 10–12. TLI's characterization of the claimed invention also supports *612 our conclusion at step one. In its briefs, TLI essentially parrots the disclosure of the ′295 patent, A asserting that claim 17 is "directed to a method for [6] Turning to Alice step one, "[w]e must first determine recording and administering digital images." Appellant's whether the claims at issue are directed to a patent- Br. 28. ineligible concept," such as an abstract idea. See Alice, 134 S.Ct. at 2355. "At step one of the Alice framework, [8] We recently clarified that a relevant inquiry at it is often useful to determine the breadth of the claims in step one is "to ask whether the claims are directed order to determine whether the claims extend to cover a to an improvement to computer functionality versus 'fundamental ... practice long prevalent in our system....' being directed to an abstract idea." See Enfish, LLC v. " Intellectual Ventures I LLC v. Capital One Bank (USA), Microsoft Corp., No. 2015–2044, 822 F.3d 1327, 1335, 792 F.3d 1363, 1369 (Fed.Cir.2015) (quoting Alice, 134 2016 WL 2756255 (Fed.Cir. May 12, 2016). We contrasted S.Ct. at 2356). But in determining whether the claims are claims "directed to an improvement in the functioning directed to an abstract idea, we must be careful to avoid of a computer" with claims "simply adding conventional oversimplifying the claims because "[a]t some level, 'all computer components to well-known business practices," inventions ... embody, use, reflect, rest upon, or apply or claims reciting "use of an abstract mathematical laws of nature, natural phenomena, or abstract ideas,' formula on any general purpose computer," or "a purely " Alice, 134 S.Ct. at 2354 (quoting Mayo, 132 S.Ct. at conventional computer implementation of a mathematical 1293). Cf. Diamond v. Diehr, 450 U.S. 175, 189 n. 12, formula," or "generalized steps to be performed on 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (cautioning that a computer using conventional computer activity." Id. overgeneralizing claims, "if carried to its extreme, make[s] at 1338. Contrary to TLI's arguments on appeal, the all inventions un-patentable because all inventions can be claims here are not directed to a specific improvement to © 2018 Thomson Reuters. No claim to original U.S. Government Works. 5 Case 6:18-cv-00080-ADA-JCM In re TLI Communications LLC Patent Litigation, 823Document 34-1 F.3d 607 (2016) Filed 11/08/18 Page 7 of 9 118 U.S.P.Q.2d 1744 computer functionality. Rather, they are directed to the col. *613 5 ll. 4–13 ("The server A includes ... [a] receiving use of conventional or generic technology in a nascent unit EE for receiving the data sent from the telephone but well-known environment, without any claim that the unit TE ... and an analysis unit AE ... which extracts the invention reflects an inventive solution to any problem classification information from data received by the server presented by combining the two. According to the ′295 S."). In other words, the focus of the patentee and of patent, the problem facing the inventor was not how the claims was not on an improved telephone unit or an to combine a camera with a cellular telephone, how to improved server. transmit images via a cellular network, or even how to append classification information to that data. Nor was For these same reasons, the claims are not directed to the problem related to the structure of the server that a solution to a "technological problem" as was the case stores the organized digital images. Rather, the inventor in Diamond v. Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 sought to "provid[e] for recording, administration and L.Ed.2d 155 (1981). See OIP Techs., 788 F.3d at 1364 archiving of digital images simply, fast and in such way ("[W]e must read Diehr in light of Alice, which emphasized that the information therefore may be easily tracked." that Diehr does not stand for the general proposition that ′295 patent, col. 1 ll. 62–65. a claim implemented on a computer elevates an otherwise ineligible claim into a patent-eligible improvement."). Nor The specification does not describe a new telephone, a do the claims attempt to solve "a challenge particular to new server, or a new physical combination of the two. the Internet." DDR Holdings, LLC v. Hotels.com, L.P., The specification fails to provide any technical details 773 F.3d 1245, 1256–57 (Fed.Cir.2014); cf. Intellectual for the tangible components, but instead predominately Ventures I, 792 F.3d at 1371 (because the patent claims at describes the system and methods in purely functional issue did not "address problems unique to the Internet, ... terms. For example, the "telephone unit" of the claims is DDR has no applicability."). described as having "the standard features of a telephone unit," id. at col. 5 ll. 54–58, with the addition of a "digital Instead, the claims, as noted, are simply directed to the image pick up unit for recording images," id. at col. abstract idea of classifying and storing digital images 5 ll. 58–61, that "operates as a digital photo camera in an organized manner. Consistent with the Supreme of the type which is known," id. at col. 6. ll. 1–2. Put Court's rejection of "categorical rules" to decide subject differently, the telephone unit itself is merely a conduit for matter eligibility, Bilski v. Kappos, 561 U.S. 593, 610, the abstract idea of classifying an image and storing the 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010), we have applied image based on its classification. Indeed, the specification the "abstract idea" exception to encompass inventions notes that it "is known" that "cellular telephones may be pertaining to methods of organizing human activity. See, utilized for image transmission," id. at col. 1 ll. 31–34, and e.g., Intellectual Ventures I, 792 F.3d at 1367 (finding the existing telephone systems could transmit pictures, audio, claim at issue "not meaningfully different from the ideas and motion pictures and also had "graphical annotation found to be abstract in other cases before the Supreme capability," id. at col. 1 ll. 52–59. Court and our court involving methods of organizing human activity"). Here, we find that, like the claims Likewise, the server is described simply in terms of at issue in Content Extraction which were directed to performing generic computer functions such as storing, "collecting data," "recognizing certain data within the receiving, and extracting data. See, e.g., id. at col. 5 ll. 1– collected data set," and "storing the recognized data in 4 ("The server [ ] is a computer system which serves for memory," 776 F.3d at 1347, attaching classification data, organizing a database which includes a large number of such as dates and times, to images for the purpose of digital images as well as classification information [ ] which storing those images in an organized manner is a well- may potentially be allocated to the digital images."). "The established "basic concept" sufficient to fall under Alice server includes a reception unit, an analysis unit which step 1. Lastly, although the claims limit the abstract idea analyzes the data that is sent from the telephone unit to a particular environment—a mobile telephone system with respect to classification information, ... as well as a —that does not make the claims any less abstract for the memory for storing the digital images." Id. at col 2 ll. 28– step 1 analysis. See OIP Techs., 788 F.3d at 1362–63. 32. But the functions of the server are described in vague terms without any meaningful limitations. See, e.g., id. at © 2018 Thomson Reuters. No claim to original U.S. Government Works. 6 Case 6:18-cv-00080-ADA-JCM In re TLI Communications LLC Patent Litigation, 823Document 34-1 F.3d 607 (2016) Filed 11/08/18 Page 8 of 9 118 U.S.P.Q.2d 1744 operates as a digital photo camera of the type which is known," id. at col. 6 ll. 1–2, compresses images according B to known methods, id. at col. 6 ll. 5–8, and transmits [9] [10] Turning to the second step in our analysis, image data and classification data according to known we find that the claims fail to recite any elements that methods, id. at col. 1 ll. 31–34, 52–59. In other words, the individually or as an ordered combination transform the telephone unit simply provides the environment in which abstract idea of classifying and storing digital images in the abstract idea of classifying and storing digital images an organized manner into a patent-eligible application in an organized manner is carried out. of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer [11] Likewise, the server fails to add an inventive patent eligibility to an otherwise abstract idea. Rather, concept because it is simply a generic computer that the components must involve more than performance "administer[s]" digital images using a known "arbitrary of " 'well-understood, routine, conventional activit[ies]' data bank system." Id. at col. 5 ll. 45–46. But "[f]or the previously known to the industry." Alice, 134 S.Ct. at 2359 role of a computer in a computer-implemented invention (quoting Mayo, 132 S.Ct. at 1294). We agree with the to be deemed meaningful in the context of this analysis, it district court that the claims' recitation of a "telephone must involve more than performance of 'well-understood, unit," a "server", an "image analysis unit," and a "control routine, [and] conventional activities previously known to unit" fail to add an inventive concept sufficient to bring the industry.' " Content Extraction, 776 F.3d at 1347–48 the abstract idea into the realm of patentability. (quoting Alice, 134 S. Ct at 2359). Here, the server simply receives data, "extract[s] classification information ... As an initial matter, TLI argues that, even if known from the received data," and "stor[es] the digital images ... in the prior art, the components recited in the claims taking into consideration the classification information." cannot be "conventional" within the meaning of the See ′295 patent, col. 10 ll. 1–17 (Claim 17). Alice absent fact-finding by the court. While we must be mindful of extraneous fact finding outside the record, These steps fall squarely within our precedent finding particularly at the motion *614 to dismiss stage, here generic computer components insufficient to add an we need to only look to the specification, which describes inventive concept to an otherwise abstract idea. Alice, the telephone unit and server as either performing basic 134 S.Ct. at 2360 ("Nearly every computer will include computer functions such as sending and receiving data, or a 'communications controller' and a 'data storage unit' performing functions "known" in the art. In other words, capable of performing the basic calculation, storage, as will be discussed below, the claimed functions are "well- and transmission functions required by the method understood, routine, activit[ies]' previously known to the claims."); Content Extraction, 776 F.3d at 1345, 1348 industry." Id. at 2359 (quoting Mayo, 132 S.Ct. at 1294). ("storing information" into memory, and using a computer to "translate the shapes on a physical page We turn first to the "telephone unit." The claims identify into typeface characters," insufficient confer patent a telephone unit with a digital pick up device. In its eligibility); Mortg. Grader, 811 F.3d at 1324–25 (generic briefing, TLI suggests that this is akin to a "camera computer components such as an "interface," "network," phone" and is a core feature of the invention sufficient and "database," fail to satisfy the inventive concept to transform the claims into patent-eligible subject requirement); Intellectual Ventures I, 792 F.3d at 1368 matter. But TLI abandoned this position at argument, (a "database" and "a communication medium" "are all conceding that the telephone unit itself is not an inventive generic computer elements"); BuySAFE v. Google, Inc., concept sufficient to confer patent eligibility. See, e.g., 765 F.3d 1350, 1355 (Fed.Cir.2014) ("That a computer Oral Argument at 2:09–14, 9:11–34, 8:20–30 (April 7, receives and sends the information over a network 2016), available at http://oralarguments.cafc.uscourts.gov/ —with no further specification—is not even arguably default.aspx?fl =E2015-1372.mp3. In any event, the inventive."). specification confirms that the telephone unit itself behaves as expected: when it is not "be[ing] used as a Dependent claims 10 and 11 respectively recite an "image 'normal telephone' to make calls," ′295 patent, col. 6 ll. analysis unit for determining quality of the digital images" 13–14, the telephone unit's "digital image pick up unit and a "control unit for controlling resolution of *615 © 2018 Thomson Reuters. No claim to original U.S. Government Works. 7 Case 6:18-cv-00080-ADA-JCM In re TLI Communications LLC Patent Litigation, 823Document 34-1 F.3d 607 (2016) Filed 11/08/18 Page 9 of 9 118 U.S.P.Q.2d 1744 digital images." These components purportedly analyze [12] In sum, the recited physical components behave exactly as expected according to their ordinary use. the image data sent from the telephone unit to determine Although the claims recite that the abstract idea of the quality of the image sent, and if certain criteria are classifying and storing digital images in an organized met, instruct the telephone unit to resend the image. While manner is carried out in a telephone system, the ′295 these units purport to add additional functionality to the patent fails to provide the requisite details necessary to server, ′295 patent, col. 5 ll. 14–32, the specification limits carry out that idea. Just as "[s]teps that do nothing more its discussion of these components to abstract functional than spell out what it means to 'apply it on a computer' descriptions devoid of technical explanation as to how cannot confer patent-eligibility," Intellectual Ventures I, to implement the invention. For example, the "image 792 F.3d at 1371–72 (citing Alice, 134 S.Ct. at 2359), here, analysis unit" predictably analyzes the digital images to steps that generically spell out what it means to "apply "determine[ ] the quality of the digital image provided to it on a telephone network" also cannot confer patent the server." Id. at col. 5 ll. 14–16; see also id. at col 8 eligibility. Thus, we find that the ′295 patent is directed to ll. 24–26. And, the "control unit" predictably "controls" patent-ineligible subject matter and we affirm the district various aspects of the claimed functionality. It "controls court's judgment. the image resolution of the digital images" using known image compression techniques, id. at col. 5 ll. 21–24, AFFIRMED and it "controls the transmission rate during transmission of the data via the transmission system," id. at col. 5 ll. 30–33. Such vague, functional descriptions of server All Citations components are insufficient to transform the abstract idea into a patent-eligible invention. 823 F.3d 607, 118 U.S.P.Q.2d 1744 End of Document © 2018 Thomson Reuters. No claim to original U.S. Government Works. © 2018 Thomson Reuters. No claim to original U.S. Government Works. 8