Match Group, LLC v. Bumble Trading Inc.

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

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8 EXHIBIT 3 Case Cellspin Soft, Inc.6:18-cv-00080-ADA-JCM v. Fitbit, Inc., 316 F.Supp.3d 1138Document (2018) 34-3 Filed 11/08/18 Page 2 of 18 Synopsis KeyCite Blue Flag – Appeal Notification Background: Owner of patent for method of utilizing Appeal Filed by CELLSPIN SOFT, INC. v. NIKE, INC., Fed.Cir., digital data capture device in conjunction with mobile April 13, 2018 device capable of short-range wireless connection for 316 F.Supp.3d 1138 publishing data and multimedia content on one or United States District Court, N.D. California, more websites automatically or with minimal user Oakland Division. intervention brought actions against alleged infringers. Several defendants filed omnibus motion to dismiss for CELLSPIN SOFT, INC., Plaintiff, failure to state a claim, and another moved for judgment v. on the pleadings. FITBIT, INC., Defendant. Cellspin Soft, Inc., Plaintiff, v. Holdings: The District Court, Yvonne Gonzalez Rogers, Moov, Inc., Defendant. J., held that: Cellspin Soft, Inc., Plaintiff, v. [1] patent claim was directed to patent-ineligible abstract Nike, Inc., Defendant. idea; Cellspin Soft, Inc., Plaintiff, v. [2] claim failed to supply inventive concept sufficient for Fossil Group, Inc. et al., Defendant. patent eligibility; AND Cellspin Soft, Inc., Plaintiff, v. [3] other claims were substantially similar and linked to Garmin International Inc. et al., Defendant. same abstract idea such that District Court did not need to expressly address each claim in determining patent Cellspin Soft, Inc., Plaintiff, eligibility. v. Cannon U.S.A., Inc., Defendant Cellspin Soft, Inc., Plaintiff, Motions granted. v. GoPro, Inc., Defendant. Cellspin Soft, Inc., Plaintiff, West Headnotes (43) v. Panasonic Corporation of [1] Patents North America, Defendant. Laws of nature, natural phenomena, and Cellspin Soft, Inc., Plaintiff, abstract ideas; fundamental principles v. In applying the implicit exception in the JK Imaging, Ltd., Defendant. statute on patentable inventions deeming laws Case No. 17-cv-05928-YGR, Case No. 17- of nature, natural phenomena, and abstract cv-05929-YGR, Case No. 17-cv-05931-YGR, ideas not patentable, courts must distinguish Case No. 17-cv-05933-YGR, Case No. 17- between patents that claim the building blocks cv-05934-YGR, Case No. 17-cv-05938-YGR, of human ingenuity and those that integrate Case No. 17-cv-05939-YGR, Case No. 17- the building blocks into something more. 35 cv-05941-YGR, Case No. 17-cv-06881-YGR U.S.C.A. § 101. | Cases that cite this headnote Signed April 3, 2018 [2] Patents © 2018 Thomson Reuters. No claim to original U.S. Government Works. 1 Case Cellspin Soft, Inc.6:18-cv-00080-ADA-JCM v. Fitbit, Inc., 316 F.Supp.3d 1138Document (2018) 34-3 Filed 11/08/18 Page 3 of 18 Laws of nature, natural phenomena, and some level, all inventions embody, use, reflect, abstract ideas; fundamental principles rest upon, or apply laws of nature, natural In considering whether claims are patent- phenomena, or abstract ideas. 35 U.S.C.A. § ineligible, a court must first determine 101. whether the claims are directed to a patent- Cases that cite this headnote ineligible concept, such as an abstract idea. 35 U.S.C.A. § 101. [7] Patents Cases that cite this headnote Computers and Software A claim directed to an abstract idea does not [3] Patents move into patent eligibility territory by merely Laws of nature, natural phenomena, and requiring generic computer implementation. abstract ideas; fundamental principles 35 U.S.C.A. § 101. A principle, in the abstract, is a fundamental Cases that cite this headnote truth which cannot be patented. 35 U.S.C.A. § 101. [8] Patents Cases that cite this headnote Use or operation of machine or apparatus as affecting process; "machine or [4] Patents transformation" test Laws of nature, natural phenomena, and If patent claims are directed to an abstract abstract ideas; fundamental principles idea, then the court must consider whether the Patents claims contain a sufficient inventive concept Mental steps or processes such that the patent in practice amounts to significantly more than a patent upon the Phenomena of nature, though just discovered, ineligible concept itself. 35 U.S.C.A. § 101. mental processes, and abstract intellectual concepts are not patentable, as they are the Cases that cite this headnote basic tools of scientific and technological work. 35 U.S.C.A. § 101. [9] Patents Cases that cite this headnote Computers and Software For the role of a computer in a computer- [5] Patents implemented invention to be deemed Laws of nature, natural phenomena, and meaningful in the context of an analysis of abstract ideas; fundamental principles whether patent claims directed to an abstract idea contain a sufficient inventive concept To determine whether patent claims are such that the patent in practice amounts directed to an abstract idea, the court must to significantly more than a patent upon distill the gist of the claims. 35 U.S.C.A. § 101. the ineligible concept itself, it must involve Cases that cite this headnote more than performance of well-understood, routine, and conventional activities previously known to the industry. 35 U.S.C.A. § 101. [6] Patents Laws of nature, natural phenomena, and 1 Cases that cite this headnote abstract ideas; fundamental principles In determining whether claims are directed [10] Patents to patent-ineligible concepts, courts must be Laws of nature, natural phenomena, and careful not to oversimplify claims because, at abstract ideas; fundamental principles © 2018 Thomson Reuters. No claim to original U.S. Government Works. 2 Case Cellspin Soft, Inc.6:18-cv-00080-ADA-JCM v. Fitbit, Inc., 316 F.Supp.3d 1138Document (2018) 34-3 Filed 11/08/18 Page 4 of 18 Patent claims must be directed to a specific means or method for improving technology Cases that cite this headnote and not simply directed to an abstract end- result. 35 U.S.C.A. § 101. [15] Federal Civil Procedure Insufficiency of claim or defense Cases that cite this headnote Federal Civil Procedure Insufficiency in general [11] Patents Under both the rule on dismissal for failure to Use or operation of machine or state a claim and the rule on judgment on the apparatus as affecting process; "machine or pleadings, a court must determine whether the transformation" test facts alleged in the complaint, taken as true, When a claim directed to an abstract idea entitle the plaintiff to a legal remedy. Fed. R. contains no restriction on how the result Civ. P. 12(b)(6), 12(c). is accomplished and the mechanism is not described, although that is stated to be the Cases that cite this headnote essential invention, then the claim is not patent-eligible. 35 U.S.C.A. § 101. [16] Federal Civil Procedure Cases that cite this headnote Insufficiency of claim or defense Federal Civil Procedure Insufficiency in general [12] Federal Civil Procedure Insufficiency in general If a complaint fails to articulate a legally sufficient claim, the complaint should be Dismissal for failure to state a claim is proper dismissed for failure to state a claim or if there is a lack of a cognizable legal theory or judgment granted on the pleadings. Fed. R. the absence of sufficient facts alleged under a Civ. P. 12(b)(6), 12(c). cognizable legal theory. Fed. R. Civ. P. 12(b) (6). Cases that cite this headnote Cases that cite this headnote [17] Federal Civil Procedure Clear right to judgment [13] Federal Civil Procedure Insufficiency in general Federal Civil Procedure Want of Fact Issue Mere conclusory allegations of law and unwarranted inferences are insufficient to Judgment on the pleadings is appropriate defeat a motion to dismiss for failure to state when there is no issue of material fact in a claim. Fed. R. Civ. P. 12(b)(6). dispute and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. Cases that cite this headnote 12(c). Cases that cite this headnote [14] Federal Civil Procedure Judgment on the Pleadings [18] Federal Civil Procedure The standard applied to a motion for Determination of Motion judgment on the pleadings is substantially identical to the standard applied to a motion If a motion for judgment on the pleadings is to dismiss for failure to state a claim. Fed. R. granted, a court should freely give leave to Civ. P. 12(b)(6), 12(c). amend when justice so requires. Fed. R. Civ. P. 12(c), 15(a). © 2018 Thomson Reuters. No claim to original U.S. Government Works. 3 Case Cellspin Soft, Inc.6:18-cv-00080-ADA-JCM v. Fitbit, Inc., 316 F.Supp.3d 1138Document (2018) 34-3 Filed 11/08/18 Page 5 of 18 The mere automation of manual processes Cases that cite this headnote using generic computers does not constitute a patentable improvement in computer [19] Federal Civil Procedure technology. 35 U.S.C.A. § 101. Determination of Motion Cases that cite this headnote As with a motion to dismiss for failure to state a claim, a court granting judgment on the pleadings should grant leave to amend unless [24] Patents it is clear that amendment would be futile. Use or operation of machine or Fed. R. Civ. P. 12(b)(6), 12(c), 15(a). apparatus as affecting process; "machine or transformation" test Cases that cite this headnote Making a process more efficient in itself does not render an abstract idea less abstract for [20] Patents purposes of patent eligibility. 35 U.S.C.A. § Mental steps or processes 101. Courts deem patent claims directed to Cases that cite this headnote analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially [25] Patents mental processes within the abstract-idea Computers and Software category. 35 U.S.C.A. § 101. To be patentable, claims directed to an improvement in computer technology must Cases that cite this headnote sufficiently describe how to achieve the improvement in a non-abstract way. 35 [21] Patents U.S.C.A. § 101. Computers and Software Cases that cite this headnote The use of existing computers as tools in aid of processes focused on abstract ideas is not sufficient to remove a patent claim from the [26] Patents abstract-idea category. 35 U.S.C.A. § 101. Computers and Software Patent claims which recite generalized steps Cases that cite this headnote to be performed on a computer using conventional computer activity are deemed [22] Patents abstract. 35 U.S.C.A. § 101. Computers and Software Cases that cite this headnote Patent claims which focus not on asserted advances in uses to which existing computer capabilities could be put, but on a specific [27] Patents improvement in how computers could carry Business methods; Internet applications out one of their basic functions, may Claims on method of utilizing digital fall outside the abstract-idea category. 35 data capture device in conjunction with U.S.C.A. § 101. mobile device capable of short-range wireless connection for publishing data Cases that cite this headnote and multimedia content on one or more websites automatically or with minimal [23] Patents user intervention were directed to patent- Computers and Software ineligible abstract idea of a method of acquiring, transferring, and publishing data © 2018 Thomson Reuters. No claim to original U.S. Government Works. 4 Case Cellspin Soft, Inc.6:18-cv-00080-ADA-JCM v. Fitbit, Inc., 316 F.Supp.3d 1138Document (2018) 34-3 Filed 11/08/18 Page 6 of 18 and multimedia content on one or more websites; claims were not directed to specific [31] Patents improvement to computer functionality, but Use or operation of machine or merely utilized generic computer hardware apparatus as affecting process; "machine or and software components, such as mobile transformation" test phones and short-range wireless connections, If patent claims are directed to an abstract to automate process of transmitting idea, then a court must determine whether multimedia content from data capture device the claim elements, when viewed individually to one or more websites. 35 U.S.C.A. § 101. and as an ordered combination, contain an inventive concept sufficient to transform the Cases that cite this headnote claimed abstract idea into a patent-eligible application. 35 U.S.C.A. § 101. [28] Patents 1 Cases that cite this headnote Use or operation of machine or apparatus as affecting process; "machine or transformation" test [32] Patents Merely presenting the results of abstract Use or operation of machine or processes of collecting and analyzing apparatus as affecting process; "machine or information, without more, such as transformation" test identifying a particular tool for presentation, A patent claim contains an inventive concept is abstract for purposes of patent eligibility if it includes additional features that are more as an ancillary part of such collection and than well-understood, routine, conventional analysis. 35 U.S.C.A. § 101. activities. 35 U.S.C.A. § 101. Cases that cite this headnote 2 Cases that cite this headnote [29] Patents [33] Patents Computers and Software Use or operation of machine or Relying on a computer to perform routine apparatus as affecting process; "machine or tasks more quickly or accurately is insufficient transformation" test to render a claim patent-eligible. 35 U.S.C.A. To save a patent directed to a patent-ineligible § 101. concept, an inventive concept must be evident in the claims. 35 U.S.C.A. § 101. Cases that cite this headnote Cases that cite this headnote [30] Patents Use or operation of machine or [34] Patents apparatus as affecting process; "machine or Business methods; Internet applications transformation" test Claims on method of utilizing digital To fall outside the abstract idea exception data capture device in conjunction with to patent eligibility based on improvements mobile device capable of short-range to a technological process, a claim must wireless connection for publishing data sufficiently describe how to achieve those and multimedia content on one or more results in a non-abstract way. 35 U.S.C.A. § websites automatically or with minimal user 101. intervention failed to supply inventive concept sufficient transform underlying abstract idea Cases that cite this headnote of a method of acquiring, transferring, and publishing data and multimedia content on © 2018 Thomson Reuters. No claim to original U.S. Government Works. 5 Case Cellspin Soft, Inc.6:18-cv-00080-ADA-JCM v. Fitbit, Inc., 316 F.Supp.3d 1138Document (2018) 34-3 Filed 11/08/18 Page 7 of 18 one or more websites into patentable subject achieve an improvement in the efficiency or matter, where recited components, including speed of a previously manual process does not data capture device, mobile device capable constitute an inventive concept sufficient for of short-range wireless connection, and that patent eligibility. 35 U.S.C.A. § 101. connection itself, behaved exactly as expected according to their ordinary uses; claims Cases that cite this headnote merely provided generic environment in which to carry out abstract idea. 35 U.S.C.A. § 101. [39] Patents Use or operation of machine or Cases that cite this headnote apparatus as affecting process; "machine or transformation" test [35] Patents For purposes of patent eligibility, there is Computers and Software nothing inventive about shifting the timing of Claims which recite the use of generic features a data collection process. 35 U.S.C.A. § 101. of hardware and software components as well as routine functions, such as transmitting and Cases that cite this headnote receiving signals to implement the underlying idea, do not contain an inventive idea [40] Patents sufficient for patent eligibility. 35 U.S.C.A. § Eligible Subject Matter 101. Claims on methods and systems of utilizing Cases that cite this headnote digital data capture device in conjunction with mobile device capable of short-range wireless connection for publishing data on [36] Patents websites, pushing event notifications within Use or operation of machine or short-range wireless connection, utilizing apparatus as affecting process; "machine or short-range wireless connection to transfer transformation" test data between Internet-incapable data capture A patent does not become nonabstract device and Internet-capable mobile device, merely because the claims are set in and utilizing short-range wireless connection a technological environment consisting of between mobile device and Internet-incapable conventional components and utilize standard digital camera device were substantially technology. 35 U.S.C.A. § 101. similar and linked to same abstract idea of a method for capturing, transferring, and Cases that cite this headnote publishing data and multimedia content, and thus District Court did not need to expressly [37] Patents address each claim in determining whether Exceptions to Eligibility; Ineligible claims were patent eligible. 35 U.S.C.A. § 101. Subject Matter Cases that cite this headnote Novelty and non-obviousness are not relevant to whether the subject matter of a claim is patentable subject matter. 35 U.S.C.A. § 101. [41] Patents Eligible Subject Matter Cases that cite this headnote Where patent claims are substantially similar and linked to the same abstract idea, a court [38] Patents need not expressly address each claim in Computers and Software determining whether the claims are patent eligible. 35 U.S.C.A. § 101. A method which utilizes known and conventional computer components to © 2018 Thomson Reuters. No claim to original U.S. Government Works. 6 Case Cellspin Soft, Inc.6:18-cv-00080-ADA-JCM v. Fitbit, Inc., 316 F.Supp.3d 1138Document (2018) 34-3 Filed 11/08/18 Page 8 of 18 1 Nine actions are noted within the omnibus caption. Cases that cite this headnote Further, plaintiff's patent infringement action against Eastman Kodak Company was dismissed without [42] Patents prejudice on December 3, 2017. (Cellspin Soft v. In general; utility Eastman Kodak Company, 17-cv-5940-YGR, Dkt. Nos. 14, 15.) Plaintiff's action against TomTom, US Patent 8,738,794, US Patent 8,892,752. Inc. and TomTom North America was dismissed Invalid in Part. without prejudice on January 25, 2018. (Cellspin Soft v. TomTom, Inc., et al., 17-cv-5937-YGR, Dkt. Nos. Cases that cite this headnote 46, 47.) The following defendants remain: Fitbit, Inc. ("Fitbit"); Moov, Inc. ("Moov"); Adidas America, [43] Patents Inc. ("Adidas"); Nike, Inc. ("Nike"); Under Armor, In general; utility Inc. ("Under Armor"); Fossil Group, Inc. and Misfit, Inc. (collectively "Fossil"); Garmin International, US Patent 9,258,698, US Patent 9,749,847. Inc. ("Garmin"); Cannon U.S.A., Inc. ("Cannon"); Invalid. GoPro, Inc. ("GoPro"); Panasonic Corporation of America ("Panasonic"); Nikon Americas, Inc. and Cases that cite this headnote Nikon, Inc. (collectively "Nikon"); and JK imagining LTD ("JK"). Adidas, Under Armor, and Nikon have filed answers. 2 The '794, '752 and '847 Patents are asserted against Attorneys and Law Firms Fitbit, Moov, Adidas, Nike, Under Armor, and *1143 John J. Edmonds, Collins Edmonds & Schlather, Fossil; the '698 Patent against Canon, GoPro, PLLC, Los Angeles, CA, Shea Neal Palavan, Collins Panasonic and JK; and all four against Garmin and Edmonds & Schlather, PLLC, Houston, TX, for Plaintiff. Nikon. 3 Unless stated otherwise all citations to docket entries Irfan Ahmed Lateef, Daniel C. Kiang, Knobbe Martens refer to Cellspin Soft Inc. v. Fitbit, Inc., 17-cv-05928- Olson & Bear LLP, Irvine, CA, for Defendant. YGR. Defendants Fitbit, Moov, Nike, Fossil, Cannon, GoPro, Panasonic, and JK (the "Omnibus Defendants") have ORDER RE: OMNIBUS MOTION TO DISMISS; filed an omnibus motion to dismiss plaintiff's claims MOTION FOR JUDGMENT ON THE PLEADINGS pursuant to Fed. R. Civ. Pro. 12(b)(6) on the ground that Yvonne Gonzalez Rogers, United States District Court the asserted patents are not patent eligible under 35 U.S.C. Judge § 101. (Dkt. No. 31, Motion to Dismiss Cellspin Soft, Inc.'s Complaints ("Omnibus MTD").) Also before the Court is Plaintiff Cellspin Soft, Inc. ("Cellspin") brings fourteen defendant Garmin's motion for judgment on the pleadings patent infringement actions 1 alleging that each defendant pursuant to Rule 12(c) on the same ground. (See Cellspin infringed one or more of Cellspin's patents, namely U.S. Soft Inc. v. Garmin International, Inc., 17-cv-5934-YGR, Patent Nos. 8,738,794 (the " '794 Patent"); 8,892,752 (the " Dkt. No. 27.) '752 Patent"); 9,749,847 (the " '847 Patent"); and 9,258,698 Having carefully reviewed the pleadings, the papers (the " '698 Patent") (collectively the "Asserted Patents"). 2 and exhibits submitted on these motions, the parties' Cellspin asserts claims 1–4, 7, 9, 16–18 and 20–21 from arguments at the hearing held on March 6, 2018, and the '794 Patent; claims 1, 2, 4, 5, and 12–14 from the for the reasons set forth more fully below, the Court '752 Patent; claims 1-3 from the '847 Patent; and claims GRANTS the Omnibus Defendants' motion to dismiss 1, 3–5, 7-8, 10–13, 15–20 from the '698 Patent. (See, Cellspin's complaints and GRANTS Garmin's motion for e.g., Cellspin Soft Inc. v. Fitbit, Inc., 17-cv-05928-YGR, judgment on the pleadings. Dkt. No. 1, Complaint for Infringement of U.S. Patents ("Complaint").) 3 I. PATENTS AT ISSUE © 2018 Thomson Reuters. No claim to original U.S. Government Works. 7 Case Cellspin Soft, Inc.6:18-cv-00080-ADA-JCM v. Fitbit, Inc., 316 F.Supp.3d 1138Document (2018) 34-3 Filed 11/08/18 Page 9 of 18 Each of the four Asserted Patents is titled "Automatic Multimedia Upload for *1144 Publishing Data and providing a software module on the Bluetooth enabled Multimedia Content" and recites the same specification. data capture device; (See, e.g., Cellspin Soft, Inc. v. Garmin International, providing a software module on the Bluetooth enabled Inc., 17-cv-5934-YGR, Dkt. No. 1, Exs. A–D at 1:1-3.) mobile device; Accordingly, the Court shall first discuss the '794 Patent and then highlight variations presented by the '752, '847, establishing a paired connection between the and '698 Patents, respectively. Bluetooth enabled data capture device and the Bluetooth enabled mobile device; A. The '794 Patent acquiring new data in the Bluetooth enabled data The specification for the '794 Patent describes a "method capture device, wherein new data is data acquired of utilizing a digital data capture device [such as a digital after the paired connection is established; or video camera or wearable fitness tracker] in conjunction with a Bluetooth™ enabled mobile device for publishing detecting and signaling the new data for transfer to the data and multimedia content on one or more websites Bluetooth enabled mobile device, wherein detecting automatically or with minimal user intervention." (Id. and signaling the new data for transfer comprises: at 3:28-32.) According to the patent, the conventional determining the existence of new data for transfer, method for publishing data and multimedia content on by the software module on the Bluetooth enabled a website was time-consuming required and manual user data capture device; and intervention: sending a data signal to the Bluetooth enabled mobile Typically, the user would capture device, corresponding to existence of new data, by an image using a digital camera the software module on the Bluetooth enabled data or a video camera, store the image capture device automatically, over the established on a memory device of the digital paired Bluetooth connection, wherein the software camera, and transfer the image to a module on the Bluetooth enabled mobile device computing device such as a personal listens for the data signal sent from the Bluetooth computer (PC). In order to transfer enabled data capture device, wherein if permitted the image to the PC, the user would by the software module on the Bluetooth enabled transfer the image off-line to the data capture device, the data signal sent to the PC, use a cable such as a universal Bluetooth enabled mobile device comprises a data serial bus (USB) or a memory stick signal and one or more portions of the new data; and plug the cable into the PC. The user would then manually upload transferring the new data from the Bluetooth enabled the image onto a website which takes data capture device to the Bluetooth enabled mobile time and may be inconvenient for device automatically over the paired Bluetooth the user. connection by the software *1145 module on the Bluetooth enabled data capture device; ('794 Patent at 1:38-47.) The '794 Patent purports to solve this problem by "utilizing a digital data capture device receiving, at the Bluetooth enabled mobile device, the in conjunction with a Bluetooth™ (BT) enabled mobile new data from the Bluetooth enabled data capture device" to "automatically publish[ ] data and multi-media device; content on one or more websites simultaneously." (Id. at 1:33-36, 1:65-2:3.) Independent Claim 1 recites: applying, using the software module on the Bluetooth enabled mobile device, a user identifier to the new A method for acquiring and transferring data from a data for each destination web service, wherein each Bluetooth enabled data capture device to one or more user identifier uniquely identifies a particular user of web services via a Bluetooth enabled mobile device, the web service; the method comprising: © 2018 Thomson Reuters. No claim to original U.S. Government Works. 8 Case Cellspin Soft, 6:18-cv-00080-ADA-JCM Inc. Document v. Fitbit, Inc., 316 F.Supp.3d 1138 (2018) 34-3 Filed 11/08/18 Page 10 of 18 4 Independent claim 6 is not asserted in the above- transferring the new data received by the Bluetooth captioned matters. enabled mobile device along with a user identifier to the one or more web services, using the software B. The '752 Patent module on the Bluetooth enabled mobile device; Independent Claim 1 of the '752 Patent is directed to receiving, at the one or more web services, the new method of transferring data from an internet incapable data and user identifier from the Bluetooth enabled data capture device to an internet server via an mobile device, wherein the one or more web services intermediary internet capable mobile device by pushing receive the transferred new data corresponding to a event notifications within an already paired and encrypted user identifier; and Bluetooth connection. (See '752 patent at 11:48-59.) Unlike the '794 Patent, the '752 Patent recites the use of a making available, at the one or more web services, the "secured" Bluetooth connection with a data encryption new data received from the Bluetooth enabled mobile step. 5 (Id. at 11:51-59, 12:13-16). device for public or private consumption over the internet, wherein one or more portions of the new 5 At the hearing held on March 6, 2018, plaintiff's data correspond to a particular user identifier. counsel conceded that use of an encrypted Bluetooth (Id. at 11:48-12:39 (emphasis supplied).) Six asserted connection to transfer data was conventional, well known, and not inventive. claims (2 through 5, 7, and 9) depend on independent claim 1 and add further limitations such as when the "data signal and the new data are transferred from the Bluetooth *1146 C. The '847 Patent enabled data capture device to the Bluetooth enabled Independent asserted Claim 1 of the '847 Patent is mobile device simultaneously[;]" "Bluetooth capability directed to a method and system of utilizing an encrypted, is provided internally in the Bluetooth enabled data paired Bluetooth connection to transfer data between an capture device[;]" and the "Bluetooth enabled mobile internet incapable data capture device and a separate device comprises one or more of audio data, video data, internet capable mobile device. Unlike the '794 Patent, image data, text data, or digital data." (Id. at 12:39-50 the '847 Patent recites the transfer of data by pushing (Claim 2), 13:48-50 (Claim 7), 13:55-58 (Claim 9).) event notifications within an already paired and encrypted Bluetooth connection. (See '847 Patent at 12:13-68.) Additionally, the '794 Patent contains two other Claim 1 of the '847 Patent recites the use of generic computer hardware and software, namely a "Bluetooth independent claims, namely claims 6 and 16. 4 Asserted enabled cellular phone," "first processor," and "mobile independent claim 16 of the '794 Patent is directed to application." (Id. at 12:12-13:3). transferring content from an "Internet incapable data capture device to an Internet server via separate Internet capable mobile device by polling the Bluetooth enabled data D. The '698 Patent capture device for newly captured data within an already Independent asserted claim 5 of the '698 Patent is directed paired and Bluetooth connection between the data capture to system for using an encrypted paired short-range wireless device and the mobile device." (Dkt No. 38, Opposition connection between an internet incapable digital camera at 20-21 (citing '794 Patent at 14:14-64) (emphasis device and a separate internet capable mobile device supplied).) Claim 16 has five dependent claims and adds wherein the acquired data is transferred to the cellular further limitations such as when the "Bluetooth capability phone in response to a request initiated by the software is provided internally in the Bluetooth enabled data application on the cellular phone over an already paired capture device[;]" "Bluetooth capability is provided to and encrypted short-range wireless connection. (See '698 the Bluetooth enabled data capture device by an external Patent at 11:56-12:25.) Independent asserted claim 1 of the Bluetooth module[;]" and "the new data transferred from '698 patent is directed to a method of network architecture the Bluetooth enabled mobile device to one or more web used to implement the system recited in claim 5. services is data associated with new data." ('794 Patent at 14:65-15:14.) Differences between the '698 Patent and the '794 Patent include the '698 Patent's utilization of a "digital camera © 2018 Thomson Reuters. No claim to original U.S. Government Works. 9 Case Cellspin Soft, 6:18-cv-00080-ADA-JCM Inc. Document v. Fitbit, Inc., 316 F.Supp.3d 1138 (2018) 34-3 Filed 11/08/18 Page 11 of 18 device" instead of a "data capture device[;]" "cellular the movant. See Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. device" instead of a "mobile device[;]" and "short-range 91, 131 S.Ct. 2238, 2245, 180 L.Ed.2d 131 (2011) (citing wireless connection" instead of "Bluetooth" connection. 35 U.S.C.A. § 282). (Id., at 12:56-67.) [2] [3] [4] [5] [6] [7] Thus, in considering whether claims are patent-ineligible, the court must first determine II. LEGAL FRAMEWORK whether the claims are directed to a patent-ineligible concept, such as an abstract idea (the "Stage-One A. Patent Eligibility Under § 101 Inquiry"). See Diamond v. Chakrabarty, 447 U.S. 303, [1] The scope of subject matter eligible for patent 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980). "A principle, protection is defined in Section 101 of the Patent Act: in the abstract, is a fundamental truth ... [which] cannot "Whoever invents or discovers any new and useful be patented." Gottschalk v. Benson, 409 U.S. 63, 67, 93 process, machine, manufacture, or composition of matter, S.Ct. 253, 34 L.Ed.2d 273 (1972) (internal citations and or any new and useful improvement thereof, may quotations omitted). "Phenomena of nature, though just obtain a patent therefor, subject to the conditions and discovered, mental processes, and abstract intellectual requirements of this title." 35 U.S.C. § 101. The Supreme concepts are not patentable, as they are the basic tools Court has "long held that this provision contains an of scientific and technological work." Id. To determine important implicit exception: Laws of nature, natural whether patent claims are directed to an abstract idea, phenomena, and abstract ideas are not patentable." Alice Corp. Pty. v. CLS Bank Int'l, ––– U.S. ––––, 134 S.Ct. the Court must "distill[ ] the gist of the claim[s]." 6 Open 2347, 2354, 189 L.Ed.2d 296 (2014) (quoting Ass'n for Text S.A. v. Box, Inc., 78 F.Supp.3d 1043, 1046 (N.D. Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. Cal. 2015)(citing Bilski v. Kappos, 561 U.S. 593, 611-12, 576, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010)). A "claim). In applying this exception, courts "must distinguish directed to an abstract idea does not move into section 101 between patents that claim the building blocks of human eligibility territory by 'merely requir[ing] generic computer ingenuity and those that integrate the building blocks implementation.' " buySAFE, Inc. v. Google, Inc., 765 into something more." Alice, 134 S.Ct. at 2354 (internal F.3d 1350, 1354 (Fed. Cir. 2014) (alteration in original) quotations and alterations omitted); see also Mayo (citing Alice, 134 S.Ct. at 2355). Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 132 S.Ct. 1289, 1301, 182 L.Ed.2d 321 (2012). 6 On the other hand, courts must be careful not to oversimplify claims because "[a]t some level, all "The Supreme Court, setting up a two-stage framework, inventions ... embody, use, reflect, rest upon, or has held that a claim falls outside § 101 where (1) it apply laws of nature, natural phenomena, or abstract is 'directed to' a patent-ineligible concept, i.e., a law of ideas." Alice, 134 S.Ct. at 2354; see also Amdocs nature, natural phenomenon, or abstract idea, and (2), (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1299 (Fed. Cir. 2016). if so, the particular elements of the claim, considered both individually and 'as an ordered combination, do not [8] [9] [10] [11] If claims are directed to an abstract add enough to transform the nature of the claim into a idea, the court must then consider whether the claims patent-eligible application.' " Electric Power Group, LLC contain a sufficient "inventive concept" such that "the v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) patent in practice amounts to significantly more than a (quoting Alice, 134 S.Ct. at 2355). "The Supreme Court's patent upon the [ineligible concept] itself" (the "Stage- formulation makes clear *1147 that the first-stage filter Two Inquiry"). Alice, 134 S.Ct. at 2355 (quoting Mayo, is a meaningful one, sometimes ending the § 101 inquiry." 132 S.Ct. at 1294); see also DDR Holdings, LLC v. Id. (citing Alice, 134 S.Ct. at 2355.) "At the same time, Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014) the two stages are plainly related" in that they "involve ("Distinguishing between claims that recite a patent- overlapping scrutiny of the content of the claims ... [and] eligible invention and claims that add too little to a patent- there can be close questions about when the inquiry should ineligible abstract concept can be difficult, as the line proceed from the first stage to the second." Id. (citing separating the two is not always clear."). "For the role Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. of a computer in a computer-implemented invention to Cir. 2016)). The burden of establishing invalidity rests on be deemed meaningful in the context of this analysis, it © 2018 Thomson Reuters. No claim to original U.S. Government Works. 10 Case Cellspin Soft, 6:18-cv-00080-ADA-JCM Inc. Document v. Fitbit, Inc., 316 F.Supp.3d 1138 (2018) 34-3 Filed 11/08/18 Page 12 of 18 must involve more than performance of well-understood, under Rule 12(b)(6). Chavez v. United States, 683 F.3d routine, [and] conventional activities previously known 1102, 1108 (9th Cir. 2012). "[U]nder both rules, 'a court to the industry." Content Extraction & Transmission must determine whether the facts alleged in the complaint, LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, taken as true, entitle the plaintiff to a legal remedy.' " Id. 1347-48 (Fed. Cir. 2014) (alteration in original) (internal (quoting Brooks v. Dunlop Mfg. Inc., 2011 WL 6140912, at quotations and citations omitted). Further, claims must *3 (N.D. Cal. 2011)). "If the complaint fails to articulate a be "directed to a 'specific means or method' for improving legally sufficient claim, the complaint should be dismissed technology" and not "simply directed to an abstract end- or judgment granted on the pleadings." Brooks, 2011 WL result." RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 6140912 at *3. Judgment on the pleadings is appropriate 1322, 1326 (Fed. Cir. 2017). For example, "when a claim "when there is no issue of material fact in dispute, and directed to an abstract idea 'contains no restriction on how the moving party is entitled to judgment as a matter of the result is accomplished ... [and] [t]he mechanism ... is law." Fleming v. Pickard, 581 F.3d 922, 925 (9th Cir. 2009) not described, although this is stated to be the essential (citing Heliotrope Gen., Inc. v. Ford Motor Co., 189 F.3d invention' " then the claim is not patent-eligible. *1148 971, 979 (9th Cir. 1999)). Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed. Cir. 2016) (quoting Internet Patents [18] [19] If a motion for judgment on the pleadings is Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. granted, a "court should freely give leave [to amend] when Cir. 2015)). justice so requires." Fed. R. Civ. P. 15(a). However, "[a]s with a Rule 12(b)(6) motion to dismiss, a court granting judgment on the pleadings pursuant to Rule 12(c) should B. Motion to Dismiss grant leave to amend unless it is clear that amendment [12] [13] Pursuant to Rule 12(b)(6), a complaint may be would be futile." Kelly Moore Paint Co., Inc. v. Nat'l Union dismissed for failure to state a claim upon which relief may Fire Ins. Co. of Pittsburgh, PA, 2014 WL 2119996, at *3 be granted. Dismissal for failure to state a claim under (N.D. Cal. 2014). Federal Rule of Civil Procedure 12(b)(6) is proper if there is a "lack of a cognizable legal theory or the absence of sufficient facts alleged under a cognizable legal theory." III. DISCUSSION Conservation Force v. Salazar, 646 F.3d 1240, 1242 (9th Cir. 2011) (citing Balistreri v. Pacifica Police Dep't, 901 A. Stage-One Inquiry: Claims Directed to an Abstract F.2d 696, 699 (9th Cir. 1988)). The complaint must plead Idea? "enough facts to state a claim [for] relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 1. Legal Standard 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). A claim is plausible on its face "when the plaintiff pleads factual [20] [21] At the Stage-One Inquiry, the Court must content that allows the court to draw the reasonable determine whether the asserted claims are directed to an inference that the defendant is liable for the misconduct abstract idea. Courts deem claims directed to "analyzing alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. information by steps people go through in their minds, or 1937, 173 L.Ed.2d 868 (2009). If the facts alleged do not by mathematical algorithms, without more, as essentially support a reasonable inference of liability, stronger than mental processes within the abstract-idea category." a mere possibility, the claim must be dismissed. Id. at Electric Power, 830 F.3d at 1353 (citing In re TLI 678–79, 129 S.Ct. 1937. Mere "conclusory allegations of Commc'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. law and unwarranted inferences are insufficient to defeat Cir. 2016)); see also Digitech Image Techs., LLC v. Elecs. a motion to dismiss." Adams v. Johnson, 355 F.3d 1179, for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); 1183 (9th Cir. 2004). *1149 Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). The use of "existing computers as tools in aid of C. Judgment on the Pleadings processes focused on 'abstract ideas' " is not sufficient [14] [15] [16] [17] The standard applied to a Rule 12(c)to remove a claim from the abstract-idea category. Id. motion for judgment on the pleadings is "substantially (citing Enfish, 822 F.3d at 1335–36; Alice, 134 S.Ct. at identical" to the standard applied to a motion to dismiss 2358–59). For example, the Supreme Court in Alice found © 2018 Thomson Reuters. No claim to original U.S. Government Works. 11 Case Cellspin Soft, 6:18-cv-00080-ADA-JCM Inc. Document v. Fitbit, Inc., 316 F.Supp.3d 1138 (2018) 34-3 Filed 11/08/18 Page 13 of 18 that claims directed to "facilitate the exchange of financial [25] [26] Ultimately, to be patentable claims must [information] between two parties by using a computer "sufficiently describe how to achieve [an improvement system as a third-party intermediary" were abstract. Alice, in computer technology] in a non-abstract way." Two- 134 S.Ct. at 2352. The Alice Court further held that Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 "the prohibition against patenting abstract ideas cannot F.3d 1329, 1337 (Fed. Cir. 2017) (finding limitations be circumvented by attempting to limit the use of [an requiring "sending" and "directing" of information "d[id] abstract idea] to a particular technological environment." not sufficiently describe how to achieve these results in a Id. at 2358 (quoting Bilski, 561 U.S. at 610–11, 130 S.Ct. non-abstract way"); see also Affinity Labs of Tex., LLC 3218); see Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, v. DIRECTV, LLC, 838 F.3d 1253, 1258–59 (Fed. Cir. 57 L.Ed.2d 451 (1978). 7 Similarly, in Electric Power, the 2016) (holding that claims were directed to an abstract Federal Circuit "treated collecting information, including idea where they claimed "the function of wirelessly when limited to particular content (which does not change communicating regional broadcast content to an out-of- its character as information), as within the realm of region recipient, not a particular way of performing that abstract ideas." Electric Power, 830 F.3d at 1353. The function"). For example, claims which recite "generalized Electric Power Court further "recognized that merely steps to be performed on a computer using conventional presenting the results of abstract processes of collecting computer activity" are deemed abstract. See In re TLI, 823 and analyzing information, without more ... is abstract as F.3d at 612 (citing Enfish, 822 F.3d at 1338). an ancillary part of such collection and analysis." Id. at 1354. *1150 2. Analysis of the '794 Patent 7 Plaintiffs' attempt to distinguish Electric Power and TLI on the ground that the patents at issue in those [27] [28] With regard to the '794 Patent, the Court cases did not involve the use of Bluetooth technology finds that the asserted claims are directed to an abstract or a paired connection does not persuade. The mere idea, namely a method of acquiring, transferring, and publishing data and multimedia content on one or more fact that the technology at issue here is different than the technology at issue in Electric Power and TLI doeswebsites. See Electric Power, 830 F.3d at 1353; Intellectual not necessarily render those prior cases inapposite. Ventures I LLC v. Capital One Financial Corp., 850 [22] [23] [24] By contrast, claims which "focus[ ] not F.3d 1332, 1341 (Fed. Cir. 2017) (claim "directed to ... on asserted advances in uses to which existing computer collecting, displaying, and manipulating data" deemed capabilities could be put, but on a specific improvement ... abstract); see also EasyWeb Innovations, LLC v. Twitter, in how computers could carry out one of their basic Inc., 689 F. App'x 969, 971 (Fed. Cir. 2017) ("As we functions" may fall outside the abstract-idea category. have explained in a number of cases, claims involving Electric Power, 830 F.3d at 1354 (citing Enfish, 822 data collection, analysis, and publication are directed F.3d at 1335–36 (the question is "whether the focus to an abstract idea."); W. View Research, LLC v. Audi of the claims is on the specific asserted improvement AG, 685 F. App'x 923, 926 (Fed. Cir. 2017) ("Collecting in computer capabilities" or on computers which "are information, analyzing it, and displaying certain results invoked merely as a tool")); see also Alice, 134 S.Ct. of the collection and analysis are a familiar class of at 2358–59. However, the "mere automation of manual claims 'directed to' a patent-ineligible concept."). The processes using generic computers does not constitute a Federal Circuit "treat[s] collecting information, including patentable improvement in computer technology." Credit when limited to particular content (which does not Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 change its character as information), as within the (Fed. Cir. 2017) (citing TLI, 823 F.3d at 612; OIP Techs., realm of abstract ideas." Electric Power, 830 F.3d Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. at 1353. "[M]erely presenting the results of abstract 2015)). Similarly, making a "process more efficient" in processes of collecting and analyzing information, itself does not "render an abstract idea less abstract." without more (such as identifying a particular tool for Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 presentation), is abstract as an ancillary part of such F.3d 905, 910 (Fed. Cir. 2017). collection and analysis." Id. at 1354. Here, the asserted claims "focus [ ] on the combination of ... abstract- idea processes[,]" namely "collecting information[,]" © 2018 Thomson Reuters. No claim to original U.S. Government Works. 12 Case Cellspin Soft, 6:18-cv-00080-ADA-JCM Inc. Document v. Fitbit, Inc., 316 F.Supp.3d 1138 (2018) 34-3 Filed 11/08/18 Page 14 of 18 transferring information between devices via a Bluetooth improvement in computer capabilities, namely Enfish and or other wireless connection, and "presenting the results" McRO. The Court addresses each case. of this data collection and transfer process on one or more websites. Id. at 1353–54. [29] In Enfish, the asserted claims were directed to a self-referential table which had a specified and TLI is instructive. There, plaintiff asserted claims which nonconventional structure. Id. at 1338. The table "store[d] were directed to a method of utilizing a smartphone to information related to each column in rows of that same record and store digital images and then transfer those table, such that new columns can be added by creating images to an online server for further processing. See new rows in the table," as opposed to conventional TLI, 823 F.3d at 609-10. The Federal Circuit highlighted tables, which "require[d] a programmer to predefine a that the problem facing the inventor was "not how to structure and subsequent [data] entry [to] conform to combine a camera with a cellular telephone, how to that structure." Id. at 1337–38. As applied here, Enfish transmit images via a cellular network .... Nor was the is distinguishable on two grounds. First, Cellspin fails to problem related to the structure of the server that stores show that the data acquisition, transfer, and publication the ... digital images." Id. at 612. In finding the claims process described in the '794 Patent represents something directed to an abstract idea, the Court held that the more than a simple automation of the conventional claims were "not directed to a specific improvement to (manual) process. As noted above, "relying on a computer computer functionality" but instead were "directed to the to perform routine tasks more quickly or accurately is use of conventional or generic technology in a nascent insufficient to render a patent claim eligible." OIP Techs., but well-known environment." Id. As in TLI, the '794 788 F.3d at 1363 (Fed. Cir. 2015); see also Phoenix Patent does do not recite a specific improvement with Licensing, L.L.C. v. Consumer Cellular, Inc., No. 6- regard to "how to combine a camera with a cellular CV-0152, 2017 WL 1065938, at *22–23 (E.D. Tex. 2017), telephone [or] how to transmit images via a cellular report and recommendation adopted, 2017 WL 1177988 network." See id. The '794 Patent is "not directed to (E.D. Tex. 2017) ("Problems such as 'substantial amount a specific improvement to computer functionality" but of human involvement,' " are "not the type of true merely utilizes generic computer hardware and software technological problems solved by inventions held to be components, namely a "ubiquitous mobile phone," patent-eligible by the Federal Circuit.") (Emphasis in paired Bluetooth connection, event notifications, "fairly original.) By contrast, the claims in Enfish were directed to widespread" personal digital assistant, and "general the generation of tables with self-referential functionality purpose computers and computing devices" to automate which tables generated pursuant to the conventional the process of transmitting multimedia content from a method lacked. data capture device to one or more websites. (See '794 Patent at 9:37–48, 10:10–13.) [30] Second, unlike Enfish, the '794 Patent does not recite a "specific ... structure" of computer components used Plaintiff argues that defendants attempt to oversimplify to carry out the purported improvement in computer the asserted claims as covering only the abstract functionality. Enfish, 822 F.3d at 1337. To fall outside idea of acquiring, transferring and publishing data. the abstract idea exception based on improvements to a According to Cellspin, the '794 Patent describes "specific technological process, a claim must "sufficiently describe improvements" in acquiring, transferring, and publishing how to achieve these results in a non-abstract way." data on the internet. However, plaintiff fails to identify Two-Way Media, 874 F.3d at 1337 (finding limitations these alleged "specific improvements" or otherwise requiring "sending" and "directing" of information "d[id] explain how these improvements result in enhanced not sufficiently describe how to achieve these results in "computer capabilities" rather than "a process that a non-abstract way"). Here, the patent states that "the qualifies as an 'abstract idea' for which computers are method and system disclosed herein may be implemented *1151 invoked merely as a tool." Enfish, 822 F.3d at in technologies that are pervasive [and] flexible" through 1339. generic hardware and software. ('794 Patent at 9:37-48, 10:10-13.) The asserted patent thus "fails to provide Cellspin attempts to analogize to two Federal Circuit any technical details for the tangible components" cases in arguing that the '794 Patent is direct to a specific and "instead predominantly describe[ ] the system and © 2018 Thomson Reuters. No claim to original U.S. Government Works. 13 Case Cellspin Soft, 6:18-cv-00080-ADA-JCM Inc. Document v. Fitbit, Inc., 316 F.Supp.3d 1138 (2018) 34-3 Filed 11/08/18 Page 15 of 18 methods in purely functional terms" using conventional whether the claim elements, when viewed individually and computer components and existing technology. See TLI, as an ordered combination, contain an inventive concept 823 F.3d at 612. The mere utilization of Bluetooth or sufficient to transform the claimed abstract idea into a similar wireless technology is not sufficient, as the patent patent-eligible application." Smart Sys. Innovations, LLC acknowledges that Bluetooth was a well-known means to v. Chicago Transit Auth., 873 F.3d 1364, 1373–74 (Fed. "connect[ ] and exchang[e] information between devices, Cir. 2017); see also BASCOM Global Internet Servs., Inc. for example, mobile phones, laptops, personal computers v. AT & T Mobility LLC, 827 F.3d 1341, 1350 (Fed. (PCs), printers, digital cameras, etc." ('794 Patent at 3:49– Cir. 2016) (stating that the "inventive concept may arise 53); see also DIRECTV, 838 F.3d at 1258 (finding that in one or more of the individual claim limitations or in claims directed to establishing a communication between the ordered combination of the limitations"). "A claim two points was a "broad and familiar concept concerning contains an inventive concept if it 'include[s] additional information distribution"). features' that are more than 'well-understood, routine, conventional activities.' " Id. (quoting Alice, 134 S.Ct. With regard to McRO, the patents at issue concerned a at 2357, 2359). The Federal Circuit has held that "in method for automating the animation of lip movement addressing the second step of Alice, [ ] claiming the and facial expressions by replacing an animator's improved speed or efficiency inherent with applying the subjective evaluation with automated rules. McRO, Inc. abstract idea on a computer [does not] provide a sufficient v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1305 inventive concept." Intellectual Ventures I LLC v. Capital (Fed. Cir. 2016). The McRO Court highlighted that the One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015). claims at issue recited "many exemplary rule sets that "To save a patent at step two, an inventive concept must go beyond" merely identifying *1152 "differences in be evident in the claims." Two-Way Media, 874 F.3d at mouth positions for similar phonemes based on context" 1338 (citing RecogniCorp, 855 F.3d at 1327). which characterized the subjective manual process. Id. at 1307. Further, the Court noted the lack of "evidence that the process previously used by animators is the 2. Analysis of the '794 Patent same as the process required by the claims [at issue]." Id. at 1314. Specifically, the conventional process was [34] [35] Turning to the '794 Patent, the Court finds that driven by subjective human determinations "rather than the asserted claims "merely provide a generic environment specific, limited mathematical rules." Id. The Court thus in which to carry out" the abstract ideas of acquiring, found that the "computer is employed to perform a transferring, and publishing data. TLI, 823 F.3d at 611. distinct process to automate a task previously performed The claim elements thus fail to supply an inventive by humans." Id. Here, by contrast, the asserted claims concept sufficient to transform the underlying abstract perform the same process of acquiring, transferring, and idea into patentable subject matter. As the Federal Circuit publishing data that humans previously performed by explained in DIRECTV, claims which "recite the use of using existing wireless protocols and other well-known generic features of" hardware and software components technology, albeit automatically using known computer "as well as routine functions, such as transmitting and components. (See '794 Patent at 1:38-47; 9:37-60.) receiving signals to implement the underlying idea" do not contain a sufficient inventive idea. DIRECTV, 838 F.3d Accordingly, the Court finds that the claims asserted in at 1262. the '794 Patent are directed to an abstract idea. [36] [37] Here, the "recited physical components[,]" namely a data capture device, paired Bluetooth B. Stage-Two Inquiry: Sufficient Inventive Concept? connection, and a Bluetooth enabled mobile device, "behave exactly as expected according to their ordinary 1. Legal Standard use." TLI, 823 F.3d at 615. A patent "does not become nonabstract" merely because the claims are set in a [31] [32] [33] Having determined that the claims at "technological environment" consisting of conventional issue in the '794 Patent are directed to an abstract idea, components and utilize standard technology. See the Stage-Two inquiry requires the Court to "determine Symantec, 838 F.3d at 1319; see also Alice, 134 S.Ct. at © 2018 Thomson Reuters. No claim to original U.S. Government Works. 14 Case Cellspin Soft, 6:18-cv-00080-ADA-JCM Inc. Document v. Fitbit, Inc., 316 F.Supp.3d 1138 (2018) 34-3 Filed 11/08/18 Page 16 of 18 2358. The Federal *1153 Circuit has "repeatedly held an efficient or automated upload that such invocations of computers and networks that are system while conserving resources not even arguable inventive are insufficient to pass the test such as batteries by avoiding the of an inventive concept." 8 Electric Power, 830 F.3d at data capture device broadcasting 1355-56. captured data when an intermediate mobile device is unavailable (e.g., 8 off or out of Bluetooth range) or Cellspin's argument that the Asserted Patents are incapable of receiving captured data novel and non-obvious is not relevant to the Section for uploading to the Internet; and 101 analysis. See Diamond v. Diehr, 450 U.S. 175, 188-89, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) ("The (6) applying HTTP in transit and on 'novelty' of any element or steps in a process, or even intermediary device. of the process itself, is of no relevance in determining whether the subject matter of a claim falls within (Opposition at 24.) Plaintiff does not persuade. As an the § 101 categories of possibly patentable subject initial matter, the Court notes that only the first purported matter."). benefit, namely efficiencies for achieving "the same or similar ends of uploading content" as the conventional [38] Cellspin counters that the Asserted Patents present method, appears in the specification of the '794 Patent. several "benefits from the inventiveness of the claimed With regard to this purported benefit, a method which technology" including: utilizes known and conventional computer components to (1) the efficiencies of the claimed achieve an improvement in the efficiency or speed of a inventions, including over inferior previously-manual process does not constitute a sufficient alternative means for achieving inventive concept. See OIP Techs., 788 F.3d at 1363; the same or similar ends of see also Capital One Bank, 792 F.3d at 1367; MySpace, uploading content; (2) leveraging Inc. v. GraphOn Corp., 672 F.3d 1250, 1267 (Fed. Cir. Internet capabilities of mobile 2012) ("While running a particular process on a computer devices (through use of custom undeniably improves efficiency and accuracy, cloaking hardware and software) to greatly an otherwise abstract idea in the guise of a computer- enhance the functionality of Internet implemented claim is insufficient to bring it within section incapable data capture devices; (3) 101."). uploading captured data from data capture devices to the Internet [39] The other proffered benefits which relate to while avoiding the cost, memory improved battery consumption and power savings; usage, complexity, hardware (e.g., order or timing of the Bluetooth wireless pairing; and cellular antenna), physical size, and elimination of the need for bulky hardware and costly battery consumption of an Internet cell phone services; 9 do not appear in the patent's accessible mobile device, including specification. In TLI, the *1154 Federal Circuit rejected without the data capture device plaintiff's proffer of technological improvements which being capable of wireless Internet did not appear in the asserted patent's specification, connections or being capable holding that the court "need [ ] only look to the of communicating in Internet specification, which describes the [components] as either accessible protocols such as HTTP; performing basic computer functions such as sending and (4) minimizing power usage by receiving data, or performing functions 'known' in the the data capture device, including art." TLI, 823 F.3d at 612; see also Cellular Commc'ns to minimize the need to change Equip. LLC v. AT & T Inc., 2017 WL 2984074, at *4 n.1 batteries or recharge the device; (E.D. Tex. 2017) (rejecting argument that a feature was (5) using event notification, polling inventive where the specification did not "reflect such an and request/return communication insight"). Cellspin argues that these benefits "flow from" protocols over an already paired the '794 Patent but fails to identify any specific section of connection to have the benefits from © 2018 Thomson Reuters. No claim to original U.S. Government Works. 15 Case Cellspin Soft, 6:18-cv-00080-ADA-JCM Inc. Document v. Fitbit, Inc., 316 F.Supp.3d 1138 (2018) 34-3 Filed 11/08/18 Page 17 of 18 the patent from which these benefits flow or articulate how able to detect the creation of a new these purported benefits "flow from" the patent. 10 file. In such cases, the digital data capture device [ ] signals the client 9 application [ ] in the event a new file Plaintiff relies on DDR in arguing that the '794 is created. A file event listener in the Patent is patent eligible because "claimed solution is client application [ ] listens for the necessarily rooted in computer technology in order to overcome a problem specifically arising in the signal from the digital data capture realm of computer networks." DDR, 773 F.3d at device [ ]. The user may then initiate 1257. However, plaintiff ignores the language in DDR the transfer by a press of a button or a which specifically "caution[ed]" that "not all claims key on the digital data capture device purporting to address Internet-centric challenges are [ ]. eligible for patent." Id. 1258. (Id. at 4:55-5:1 (portions cited by plaintiff in bold).) 10 In any event, the specification acknowledges that Again, the alleged technological improvements appear Bluetooth was used in the prior art to "connect[ ] nowhere in the claims or specification and plaintiff fails and exchang[e] information between devices, for to explain how such benefits otherwise "flow from" the example, mobile phones, laptops, personal computers patent. Similarly, plaintiff's amended complaint alleges (PCs), printers, digital cameras, etc." ('794 Patent at that the asserted claims "conserve[ ] resources such as 3:49-52.) With regard to the timing of the Bluetooth wireless paring, "there is nothing 'inventive' about batteries." (Amended Complaint ¶ 19(e) (citing '794 Patent shifting the timing of the data collection process." at 4:55-5:3 and 5:12-17).) However, the cited sections do In re: Bill of Lading Transmission & Processing Sys. not discuss resource conversation or batteries. 11 (See Patent Litig., 2016 WL 4505767, at *3 (S.D. Ohio '794 patent at 4:55-5:3 and 5:12-17.) In the same vein, 2016). the specification does not support Cellspin's allegations Plaintiff's amended complaints do not change this regarding improved cost benefits. 12 conclusion. (Dkt. No. 58, Amended Complaint.) As an initial matter, the Court notes that most of plaintiff's 11 The term "battery" does appear in any of the Asserted allegations regarding technological improvements fail to Patents. cite to support in the '794 Patent. (Id. at ¶¶ 13, 15, 12 Plaintiff also relies on Berkheimer in arguing that 17, 18, 19.) Further, where plaintiff does cite to the patent these citations do not appear to support plaintiff's this Court should deny defendants' motions because arguments. For example, the amended complaint alleges "the question of whether a claim element or that the Asserted Patents "improved ... prior computer combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant and networking technology" by "[m]inimizing power field .... must be proven by clear and convincing usage by the data capture device, including [minimizing] evidence." Berkheimer v. HP, Inc., 881 F.3d 1360 the need to charge batteries or recharge the device." (Id. at (Fed. Cir. Feb. 2018). Here the Court need not ¶ 19(d) (citing '794 Patent at 4:66-5:1).) However, the cited reach the issue in the manner suggested given section of the '794 Patent does not reference power usage the analysis performed under the two-stage test. or battery savings, much less support plaintiff's allegation Berkheimer addressed a defendant's burden at the of improvements to the same: summary judgment stage, not in the context of a motion to dismiss. In any event, Berkheimer is By implementation of a handshake distinguishable on that ground that the patent at protocol, the BT communication issue there "describe[d] an inventive feature that device [ ] automatically transfers store[d] parsed data in a purportedly unconventional captured data, the multimedia manner" whereas here Cellspin fails to identify any content, and the associated files to portion of the specification which describes the the client application [ ] on the purportedly inventive power usage, battery savings, mobile device [ ]. For some external resource conservation, or cost benefits. Id. digital data capture devices, the With respect to the Amended Complaint, the Court notes that the plaintiff did not file the same until client application [ ] may not be two business days before the hearing on these © 2018 Thomson Reuters. No claim to original U.S. Government Works. 16 Case Cellspin Soft, 6:18-cv-00080-ADA-JCM Inc. Document v. Fitbit, Inc., 316 F.Supp.3d 1138 (2018) 34-3 Filed 11/08/18 Page 18 of 18 motions. Accordingly, at oral argument having heard from plaintiff, the Court allowed defendants to Further, plaintiff fails to offer any argument or authority respond in writing on the impact of plaintiff's filing. as to why the differences between the '794 Patent and the Thereafter, without requesting permission, plaintiff '752 (pushing event notifications within an already paired filed a response in violation of the procedures set and encrypted Bluetooth connection); '847 (utilizing an forth in the Local Rules. The Court issued an encrypted, paired Bluetooth connection; pushing event Order to Show Cause ("OSC") regarding the same. notifications within an already paired and encrypted In light of the Court's ruling herein, the Court Bluetooth connection); and '698 Patents ("utilizing an GRANTS permission for the filing nunc pro tunc, encrypted paired short-range wireless connection between DISCHARGES the OSC and cautions plaintiff to a mobile device and incapable digital camera device) follow the rules of the Court or risk sanctions for represent an inventive concept sufficient to transform the failure to do so. (Dkt. Nos. 74, 75.) claimed abstract idea into a patent-eligible application." Smart Sys. Innovations, 873 F.3d at 1373–74; see also *1155 C. The '752, '847, and '698 Patents BASCOM, 827 F.3d at 1350. [40] [41] With regard to the '752, '847, and '698 Patents, the Court finds that each of the Asserted Patents is The Court thus finds the '794 Patent is representative of directed to substantially similar abstract idea, namely a all Asserted Patents. Accordingly, the Court finds that the method for capturing, transferring and publishing data '752, '847, and '698 Patents are not patent eligible. and multimedia content. Specifically, each patent recites the use of a Bluetooth enabled data capture device or digital camera device to transfer data to a Bluetooth IV. CONCLUSION enabled mobile device which in turn publishes the data on Having carefully reviewed the pleadings, the papers and one or more websites automatically or with minimal user exhibits submitted on this motion, the parties' arguments intervention. (See '752 Patent at 11:48-12:38; '847 Patent at the hearing held on March 6, 2018, and for the reasons at 12:13-13:3; '698 Patent at 11:54-12:28.) Where all of set forth above, the Court GRANTS *1156 the Omnibus the asserted patent claims are "substantially similar and Defendants' motion to dismiss and GRANTS Garmin's linked to the same abstract idea[,]" the Court need not motion for judgment on the pleadings. "expressly address each asserted claim" in determining whether the claims are patent eligible under Section 101. Defendants shall file a proposed order of judgment TS Patents LLC v. Yahoo! Inc., 279 F.Supp.3d 968, 988 approved as to form within five (5) days for each of the (N.D. Cal. 2017); see also Content Extraction, 776 F.3d at captioned matters. 1348 (finding that the district court "correctly determined that addressing each claim of the asserted patents was IT IS SO ORDERED. unnecessary" because "all the claims are 'substantially similar and linked to the same abstract idea'"). Here, all Asserted Patents are "substantially similar and linked All Citations to the same abstract idea" of acquiring, transferring, and 316 F.Supp.3d 1138 publishing data on the internet. See id. 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. 17