United States District Court, N.D. California
ORDER ON MOTION TO DISMISS
WILLIAM ALSUP UNITED STATES DISTRICT JUDGE.
Zoom Video Communications, Inc. has moved to dismiss as to
all claims in each patent-in-suit based on Section 101 of
Title 35 of the United States Code, which defines
patent-eligible subject matter as “any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof” (Dkt. No.
Under well-established Supreme Court precedent, however, laws
of nature, natural phenomena, and abstract ideas remain
patent-ineligible under Section 101. See, e.g.,
Ass'n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70 (2012)).
determine patent eligibility, the Supreme Court has
established a two-step inquiry. “First, we determine
whether the claims at issue are directed to one of those
patent-ineligible concepts.” Alice Corp. v. CLS
Bank Int'l, 573 U.S. 208, 216 (2014). “The
Supreme Court has not established a definitive rule to
determine what constitutes an ‘abstract idea'
sufficient to satisfy the first step of the
Mayo/Alice inquiry.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).
“We determine whether the claims ‘focus on a
specific means or method that improves the relevant
technology' or are ‘directed to a result or effect
that itself is the abstract idea and merely invoke generic
processes and machinery.' ” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016)
(quoting McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016)).
claims are directed to a patent-ineligible concept, then we
determine whether the claims contain an “inventive
concept, ” i.e., “an element or
combination of elements that is ‘sufficient to ensure
that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.'
” Alice, 573 U.S. at 217-18 (quoting
Mayo, 566 U.S. at 72-73) (alteration in original).
“While the ultimate determination of eligibility under
§ 101 is a question of law, like many legal questions,
there can be subsidiary fact questions which must be resolved
en route to the ultimate legal determination.”
Aatrix Software, Inc. v. Green Shades Software,
Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018). For example,
claims contain an “inventive concept” when their
limitations “involve more than performance of
‘well-understood, routine, [and] conventional
activities previously known to the industry.' ”
Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat. Ass'n, 776 F.3d 1343, 1347-48 (Fed. Cir.
2014) (quoting Alice, 573 U.S. at 225) (alteration
in original). “Whether the claim elements or the
claimed combination are well-understood, routine,
conventional is a question of fact.” Aatrix,
882 F.3d at 1128. Dismissal at the motion to dismiss stage is
appropriate “only when there are no factual allegations
that, taken as true, prevent resolving the eligibility
question as a matter of law.” Id. at 1125.
review of the parties' briefing and oral argument, the
Court is of the view that proper resolution of the Section
101 issues is intertwined with issues of fact. The Court
further finds that at this very early stage, little purpose
would be served in working through every claim in the
patents-in-suit (as the parties do not agree on
representative claims) to assess whether or not each one
satisfies Alice/Mayo step one. This is particularly
true where, as here, the complaint neglects to specify which
claims are infringed, but this shortfall is not criticized by
the instant motion to dismiss. Conceivably, once the Court is in
a position to rule on Alice/Mayo step two of
whatever is asserted, it will be in a better position to
assess step one as well. Accordingly, the motion to dismiss is
Denied in its entirety without prejudice to
renewal to a more developed factual record. Zoom's
request for judicial notice (Dkt. No. 25) is Denied
IS SO ORDERED.
 The patents-in-suit are United States
Patent Nos. 9, 615, 056 (“the '056 patent”),
9, 185, 347 (“the '347 patent”), and 10, 182,
205 (“the '205 patent”).
 The complaint merely asserts that Zoom
infringes “at least one claim” of each
patent-in-suit (Dkt. No. 1 ¶¶ 64, 104,
See, e.g., PPS Data, LLC v. Jack
Henry & Assocs., Inc., No. C 18-00007 JRG, 2019 WL
1317286, at *7 (E.D. Tex. Mar. 21, 2019) (Judge Rodney
Gilstrap) (“Courts often deny motions seeking dismissal
on the pleadings without prejudice to refiling the motion in
order to obtain a more complete understanding of the claimed
invention. . . . The Court finds that the determination of
whether Claim 1 of the '430 Patent is valid under §
101 would benefit from a fuller factual record. In
particular, a more developed record would help the Court
resolve the parties' dispute over whether the limitations
set forth in Claim 1 of the '430 Patent constitute a