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United States District Court, N.D. California, San Jose Division

November 1, 2019

VOIP-PAL.COM, INC., Plaintiff,
APPLE INC, Defendant. VOIP-PAL.COM, INC., Plaintiff,



         Plaintiff Voip-Pal.Com, Inc. filed two related patent infringement suits alleging infringement of U.S. Patent Nos. 9, 537, 762 (the “'762 Patent”); 9, 813, 330 (the “'330 Patent”), 9, 826, 002 (the “'002 Patent”); and 9, 948, 549 (the “'549 Patent”) (collectively, the “Patents-in-Suit”). One suit is against Defendant Apple Inc. (“Apple”), Case No. 18-CV-06216, and the other is against Defendants, Inc. and Amazon Technologies, Inc. (collectively, the “Amazon Defendants”), Case No. 18-CV-07020. Before the Court is Defendants' consolidated motion to dismiss Plaintiff's amended complaints pursuant to Federal Rule of Civil Procedure 12(b)(6). Defendants contend that the asserted claims of the Patents-in-Suit fail to recite patent-eligible subject matter under 35 U.S.C. § 101. ECF No. 67[1]; Case No. 18-CV-06216, ECF No. 89 (collectively, “Def. Cons. Mot. to Dismiss”). Having considered the submissions of the parties, the relevant law, and the record in this case, the Court GRANTS Defendants' consolidated motion to dismiss with prejudice.

         I. BACKGROUND

         A. Factual Background

         The following facts are drawn from Plaintiff's amended complaints, ECF No. 61 and Case No. 18-CV-06216, ECF No. 81, as the Court must accept the allegations therein as true at the motion to dismiss stage, Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).

         1. The Parties and Technologies

         Plaintiff is a Nevada corporation with its principal place of business in Bellevue, Washington. ECF No. 61 (“Amazon FAC”). Plaintiff, through its wholly owned subsidiary Digifonica, owns various patents relating to “Internet Protocol (‘IP') based communication.” Id. ¶¶ 23, 46. An IP-based system uses the Internet to carry voice and other communications instead of a traditional switched circuit network, such as the Public Switched Telephone Network (“PSTN”). Id. ¶¶ 17, 21.
, Inc. is a Delaware corporation with its principal place of business in Seattle, Washington. Id. ¶ 2. Amazon Technologies, Inc. is a Nevada corporation with its principal place of business in Seattle, Washington. Id. ¶ 3. Of relevance to the present case, the Amazon Defendants sell systems and devices that “support communications, including calling and messaging, ” using what Plaintiff refers to as the “Amazon Alexa Calling and Messaging System.” Id. ¶ 46. These devices include, but are not limited to “the Amazon Echo, Echo Plus, Echo Dot, Echo Spot, Echo Show, Echo Connect, Amazon Tap, ” and certain Amazon Fire devices, as well as phones and tablets equipped with certain versions of the Alexa app. Id. ¶ 47.

         Apple is a California corporation with its principal place of business in Cupertino, California. Case No. 18-CV-06216, ECF No. 81 (“Apple FAC”) ¶ 2. Apple operates two systems that are relevant to the present case. First, “Apple's iMessage® system and service allows devices to communicate between participants, e.g., as between a first participant or user registered with Apple (such as through an Apple identifier) or that is using an Apple device, and a second user or participant that may or may not be a user registered with Apple or that may or may not be using an Apple device.” Id. ¶ 48. Second, “Apple's Facetime® system and service allows devices to initiate an audio or video/audio communication between at least two participants which may or may not be associated with an Apple identification or Apple devices/software.” Id. ¶ 49. In addition, “Apple enables the use of WiFi Calling in conjunction with its iMessage® and Facetime® systems and services, which allows an Apple device to initiate communications between participants using internet protocol (IP) based communication methods and participants using external networks, such as the PSTN.” Id. ¶ 50.

         2. The Patents-in-Suit

         Plaintiff alleges that Defendants infringe four patents: the '762 Patent, the '330 Patent, the '002 Patent, and the '549 Patent. The '762 Patent was filed on October 7, 2015 and issued on January 3, 2017. The '330 Patent was filed on December 30, 2016 and issued on November 7, 2017. The '002 Patent was filed on January 12, 2017 and issued on November 21, 2017. The '549 Patent was filed on October 19, 2017 and issued on April 17, 2018. The Patents-in-Suit are all entitled “Producing Routing Messages for Voice over IP Communications.” The Patents-in-Suit share the same specification, which is also the specification for the two patents in a related case. The parties cite the specification of the '002 Patent, so the Court does the same.

         Specifically, Plaintiff asserts the following twenty claims:

Patent No.

Asserted Claims


6, 16, 21, 26, 30


3, 4, 12, 14


1, 12, 22, 26, 29


2, 6, 9, 12, 17, 24

         In general, the Patents-in-Suit relate to a “system architecture and operation, ” FAC ¶ 35, for routing IP-based communications, including communications between private IP-based networks and external networks such as the Public Switched Telephone Network (“PSTN”). FAC ¶ 26. The PSTN is the traditional landline telephone system, used primarily for voice communications. FAC ¶ 28. An IP-based communication system, by contrast, uses the Internet to carry communications such as phone calls-commonly referred to as “Voice-over-IP”-and other media (video, photos, etc.). IP telephones are “typically personal computer (PC) based telephones connected within an IP network, such as the public Internet or a private network of a large organization.” '002 Patent at 1:22-26. A private network is an organization's internal communication network. FAC ¶ 29. Private networks predate the Patents-in-Suit and Voice-over-IP generally. FAC ¶¶ 24, 29. One common form of private network is the “private branch exchange (PBX), ” which employs private numbering schemes such as “extensions.” FAC ¶¶ 24, 29.

         Of course, from time to time, users on a private network may need to place a call to someone outside of the private network, such as through the PSTN or the public Internet. For that reason, “IP telephony switches installed within the IP network enable voice calls to be made within or between IP networks, and between an IP network and a switched circuit network (SCN), such as the public switched telephone network.” '002 Patent at 1:30-34. The Patents-in-Suit refer to communications within the private network as “system communications” and communications with someone outside of the private network as “external network communications.” The Court does the same.

         One conventional method for routing calls to an external network is “to require users to input a special code (e.g., a prefix digit of ‘9')” in order to initiate a call on the PSTN; otherwise, the call proceeds on the private network. FAC ¶¶ 24, 30. The Patents-in-Suit here disclose a different method for routing calls through the appropriate network and, ultimately, to the recipient of the call.

         Specifically, the Patents-in-Suit disclose a process for routing a call (or transmission of other media) using “identifiers” associated with “callers and callees.”[2] '002 Patent at 1:58-64. Such identifiers could be, in layman's terms, a phone number or username. See Id. at 2:13-17; 15:23-25. According to Plaintiff, the technology “evaluat[es] a called party identifier based on profile settings (‘attributes') associated with the calling party.” FAC ¶ 32. Based upon that evaluation, the technology “produces a routing message, ” id. ¶ 34, containing an appropriate routing “address”-“e.g., an address in the system associated with the second participant or of a gateway to an external network, ” id. ¶ 40-“for receipt by a call controller . . ., thereby causing the call controller to establish the call, ” id. ¶ 34. Thus, “the asserted claims . . . use a caller's attributes to evaluate a callee identifier against network routing criteria to cause a call to automatically be routed over a system network or another network (e.g., such as the PSTN) interconnected to the system network through a gateway . . . without the user manually specifying which network to use for routing . . . (e.g., by dialing a prefix of ‘9' to make a PSTN call).” FAC ¶ 33. Notably, there is no need for the user to manually specify which network to use for routing the call. FAC ¶ 33.

         Figure 1 of the specification is helpful to understanding the invention.

         (Image Omitted)

         Looking at Figure 1, "a system for making voice over IP telephone/videophone calls is shown generally at [item] 10." '002 Patent at 13:20-21. Item 11 is a "super node" located, for example, in Vancouver, Canada and providing service to a user (item 12) in Vancouver. Item 21 is a "super node" located, for example, in London, England and providing service to a user in London. Id. at 13:21-26. The Vancouver super node includes a call controller (item 14), a routing controller (item 16), a database (item 18), a voicemail server (item 19), and a media relay (item 9). Id. at 13:48-50. These components of the super node are implemented by computer, either "on a common computer system or by separate computers." Id. at 13:51-53. Users such as a Vancouver user (item 12) and a Calgary user (item 15) communicate with the Vancouver super node using the internet (item 13). Id. at 13:55-59. Specifically, each user has "a telephone . . . that is capable of communicating with the Vancouver supernode . . . using Session Initiation Protocol (SIP) messages." Id. at 13:63-67.

         Suppose the Vancouver user (item 12) is attempting to call the Calgary user (item 15). The caller (item 12) sends an SIP invite message to the Vancouver super node (item 10). Id. at 14:51-54. The SIP invite message contains, among other things, a caller ID field and a callee identifier field. Id. at 16:19-20. In response, the call controller (item 14) sends a routing controller request message (referred to in the specification as “RC request message”) to the routing controller (item 16). Id. at 14:51-56. The RC request message contains, among other things, copies of the caller ID field and the callee identifier field from the SIP invite message. Id. at 17:55-58, 16:19-21. The RC request message causes the routing controller (item 16) to query the database (item 18) using the caller ID field in order to locate and retrieve a record associating calling attributes with the caller. Id. at 14:56-58; 18:33-37. Example attributes include national dialing digits, international dialing digits, country code, local area code, the maximum number of concurrent calls the user is entitled to cause, and username. Id. at 18:40-58; 19:37-49. The routing controller (item 16) then compares the callee identifier to the caller's attributes. Id. at 20:13 - 21:29. Based upon the comparison, the routing controller (item 16) produces a routing message, which is then sent back to the call controller (item 14). Id. at 14:56-58. The call controller (item 14) communicates with the media relay (item 9) to create a communications link with the callee (item 15) through the media relay (item 9) “to the same node, a different node or to a communications supplier gateway” (item 20). Id. at 14:61-64.

         B. Procedural History

         The instant motion pertains to two patent infringement suits that have been consolidated for pre-trial purposes. ECF No. 40. On May 24, 2018, Plaintiff filed its complaint against Apple in Case No. 18-CV-06216 (the “Apple Action”) in the U.S. District Court for the District of Nevada. Case No. 18-CV-06216, ECF No. 1. The Apple Action was subsequently transferred and reassigned to this Court. Case No. 18-CV-06216, ECF Nos. 24, 43.

         On June 15, 2018, Plaintiff filed a complaint against, Inc., Amazon Technologies, Inc., and Amazon Lab 126 in Case No. 18-CV-07020 (the “Amazon Action”) in the U.S. District Court for the District of Nevada. ECF No. 1. Plaintiff then dismissed its allegations against Amazon Lab 125. ECF No. 14, 17. The Amazon Action was subsequently transferred and reassigned to this Court. ECF Nos. 20, 29.

         Defendants filed a consolidated motion to dismiss the Apple Action and the Amazon Action on February 15, 2019. ECF No. 57. On March 15, 2019, however, Plaintiff moved for leave to amend its complaints in both actions. ECF No. 48; Case No. 18-CV-06216, ECF No. 67. The Court granted Plaintiff's motion, ECF No. 59, and denied Defendants' motions to dismiss as moot, ECF No. 64.

         On May 17, 2019, Plaintiff filed the operative amended complaints-the Amazon FAC and the Apple FAC. ECF No. 61; Case No. 18-CV-06216, ECF No. 81. On June 5, 2019, Defendants filed the identical consolidated motion to dismiss the amended complaints based upon 35 U.S.C. § 101 in both cases. ECF No. 67; Case No. 18-CV-06216, ECF No. 89. Plaintiff filed a consolidated opposition, ECF No. 69 (“Pl. Opp.”), and Defendants replied, ECF No. 70 (“Def. Reply”). The motion is now before the Court.

         In addition, Apple has filed inter partes review petitions with the Patent Trial and Appeal Board (“PTAB”) for all four Patents-in-Suit. ECF No. 77 at 4. Those petitions are still pending.

         C. The Related Consolidated Case

         The instant actions are related to four other patent infringement suits brought by Plaintiff Voip-Pal.Com, Inc. against Defendants Apple (18-CV-06217), AT&T Corp. (18-CV-06177), Twitter Inc. (18-CV-04523), and Cellco Partnership d/b/a/ Verizon Wireless Services, LLC (“Verizon”) (18-CV-06054). This Court consolidated the four suits for pretrial purposes, Case No. 18-CV-06217, ECF No. 96 at 9, so the Court refers to them collectively as “the Related Consolidated Case.” In those actions, Plaintiff alleged that Apple, AT&T Corp., and Verizon (but not Twitter Inc.) infringe various claims of U.S. Patent No. 8, 542, 815 (the “'815 Patent”) and that all four defendants infringe various claims of U.S. Patent No. 9, 179, 005 (the “'005 Patent”). Id. at 2. The '815 Patent and the '005 Patent have the same specification and title as the Patents-in-Suit.

         Claiming that the '815 and '005 patents are invalid for lack of patentable subject matter under § 101, the defendants filed an omnibus motion to dismiss all four suits pursuant to Federal Rule of Civil Procedure 12(b)(6). Id. at 10-11. This Court found that the asserted claims of the '815 and '005 patents are directed to unpatentable subject matter and granted the motions to dismiss. Id. at 44. Accordingly, the Court entered judgment in favor of Defendants Apple, Twitter Inc., AT&T Corp., and Verizon on March 25, 2019. Case No. 18-CV-06217, ECF No. 98. Plaintiff then appealed to the Federal Circuit, and that appeal is still pending. Case No. 18-CV-06217, ECF No. 100.


         A. Motion to Dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6)

         Federal Rule of Civil Procedure 8(a)(2) requires a complaint to include “a short and plain statement of the claim showing that the pleader is entitled to relief.” A complaint that fails to meet this standard may be dismissed pursuant to Federal Rule of Civil Procedure 12(b)(6). A complaint must contain “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). “Dismissal under Rule 12(b)(6) is appropriate . . . where the complaint lacks a cognizable legal theory or sufficient facts to support a cognizable legal theory.” Mendiondo v. Centinela Hosp. Med. Ctr., 521 F.3d 1097, 1104 (9th Cir. 2008).

         In ruling on a Rule 12(b)(6) motion, a court must “accept factual allegations in the complaint as true and construe the pleadings in the light most favorable to the nonmoving party.” Manzarek, 519 F.3d at 1031. A court need not, however, “assume the truth of legal conclusions merely because they are cast in the form of factual allegations.” Fayer v. Vaughn, 649 F.3d 1061, 1064 (9th Cir. 2011) (per curiam) (internal quotation marks omitted). Mere “conclusory allegations of law and unwarranted inferences are insufficient to defeat a motion to dismiss.” Adams v. Johnson, 355 F.3d 1179, 1183 (9th Cir. 2004).

         B. Challenging Patent Eligibility under 35 U.S.C. § 101 on Motion to Dismiss

         Defendant's motion to dismiss argues that the Patents-in-Suit fail to claim patent-eligible subject matter under 35 U.S.C. § 101, as elucidated by the U.S. Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014).

         The ultimate question whether a claim recites patent-eligible subject matter under § 101 is a question of law. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017) (“Patent eligibility under § 101 is an issue of law[.]”); In re Roslin Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014) (same). Although the Federal Circuit has said that the § 101 analysis “may contain disputes over underlying facts, ” it has also made clear that patent eligibility can often be resolved on a motion to dismiss. Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) (“As our cases demonstrate, not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.”); see also Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017) (“[W]e have repeatedly affirmed § 101 rejections at the motion to dismiss stage, before claim construction or significant discovery has commenced.”); Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir. 2017) (affirming determination of ineligibility made on 12(b)(6) motion). Likewise, “claim construction is not an inviolable prerequisite to a validity determination under § 101, ” though it may be desirable or even necessary in some cases. Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1273 (Fed. Cir. 2012).

         In other words, where the court has a “full understanding of the basic character of the claimed subject matter, ” the question of patent eligibility may properly be resolved on the pleadings. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1349 (Fed. Cir. 2014).

         C. Patent-eligible Subject Matter under 35 U.S.C. § 101

         Section 101 of Title 35 of the United States Code “defines the subject matter that may be patented under the Patent Act.” Bilski v. Kappos, 561 U.S. 593, 601 (2010). Under § 101, the scope of patentable subject matter encompasses “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Id. (quoting 35 U.S.C. § 101). These categories are broad, but they are not limitless. Section 101 “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice, 573 U.S. at 216 (citation omitted). These three categories of subject matter are excepted from patent-eligibility because “they are the basic tools of scientific and technological work, ” which are “free to all men and reserved exclusively to none.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (citations omitted). The U.S. Supreme Court has explained that allowing patent claims for such purported inventions would “tend to impede innovation more than it would tend to promote it, ” thereby thwarting the primary object of the patent laws. Id. At the same time, the U.S. Supreme Court has cautioned that “[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Alice, 573 U.S. at 217 (alterations and internal quotation marks omitted). Accordingly, courts must “tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Id.

         In Alice, the leading case on patent-eligible subject matter under § 101, the U.S. Supreme Court refined the “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts” originally set forth in Mayo, 566 U.S. at 77. Alice, 573 U.S. at 217. This analysis- commonly known as the “Alice” framework-comprises two steps:

First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us?” To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. We have described step two of this analysis as a search for an “‘inventive concept'”- i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”

Id. (alterations in original) (citations omitted); see also In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (describing “the now familiar two-part test described by the Supreme Court in Alice”). The Court refers to these steps as Alice Step One and Alice Step Two, respectively.

         1. Alice Step One: Identification of Claims Directed to a Patent-Ineligible Concept

         At Alice Step One, a court must “determine whether the claims at issue are directed to a patent-ineligible concept, ” such as an abstract idea. Alice, 573 U.S. at 218. “The ‘abstract ideas' category embodies the longstanding rule that an idea of itself is not patentable.” Id. (internal quotation marks and alterations omitted). However, neither the U.S. Supreme Court nor the Federal Circuit has set forth a “definitive rule” separating “abstract ideas” from concepts that are sufficiently concrete so as to require no further inquiry under the first step of the Alice framework. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Alice, 573 U.S. at 221 (in which the Court did not “labor to delimit the precise contours of the ‘abstract ideas' category in this case”); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1345 (Fed. Cir. 2015) (“[P]recision has been elusive in defining an all-purpose boundary between the abstract and the concrete[.]”). As a result, in evaluating whether particular claims are directed to patent-ineligible abstract ideas, courts have generally begun by “compar[ing] claims at issue to those claims already found to be directed to an abstract idea in previous cases.” Enfish, 822 F.3d at 1334.

         Two of the U.S. Supreme Court's leading cases concerning the “abstract idea” exception involved claims held to be abstract because they were drawn to longstanding, fundamental economic practices. See Alice, 573 U.S. at 219 (claims “drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk” were directed to a patent-ineligible abstract idea); Bilski, 561 U.S. at 611-12 (claims drawn to “the basic concept of hedging, or protecting against risk” were directed to a patent-ineligible abstract idea because “[h]edging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class” (citation omitted)). Alice is of particular relevance here, as it involved a computerized invention. 573 U.S. at 213. In general, however, determining whether a computer-implemented claim is abstract has proven more “vexing.” CLS Bank Int'l v. Alice Corp. Pty., 717 F.3d 1269, 1276 (Fed. Cir. 2013), aff'd, 573 U.S. 208 (2014) (“§ 101 appears deceptively simple on its face, yet its proper application to computer-implemented inventions . . . has long vexed this and other courts.”). Nevertheless, courts considering computer-implemented inventions have distilled “some important principles” from relevant U.S. Supreme Court and Federal Circuit precedents in determining whether an invention is directed to an abstract idea. DDR Holdings, LLC v., L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).

         First, the U.S. Supreme Court has recognized that information itself is intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007). Accordingly, the Federal Circuit has generally invalidated claims that are directed to some combination of acquiring information, analyzing information, and/or displaying the results of that analysis. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094-95 (Fed. Cir. 2016) (claims “directed to collecting and analyzing information to detect misuse and notifying a user when misuse is detected” were drawn to a patent-ineligible abstract idea); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (claims directed to an abstract idea because “[t]he advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions”); In re TLI Commc'ns LLC, 823 F.3d at 611 (claims were “directed to the abstract idea of classifying and storing digital images in an organized manner”); see also Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases).

         In another important strand of cases, courts consider whether the claims “purport to improve the functioning of the computer itself, ” Alice, 573 U.S. at 225-which may suggest that the claims are not abstract-or instead whether “computers are invoked merely as a tool” to carry out an abstract process, Enfish, 822 F.3d at 1336. The Federal Circuit has followed this approach to find claims patent-eligible in several cases. Compare Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259-60 (Fed. Cir. 2017) (claims directed to an improved memory system were not abstract because they “focus[ed] on a ‘specific asserted improvement in computer capabilities'-the use of programmable operational characteristics that are configurable based on the type of processor” (quoting Enfish, 822 F.3d at 1336)); and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (claims directed to automating part of a preexisting method for 3-D facial expression animation were not abstract because they “focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type”); with Enfish, 822 F.3d at 1335-36 (claims were not abstract because they focused “on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database)”).

         In the same vein, the Federal Circuit has found that claims directed to a “new and useful technique” for performing a particular task were not abstract. See Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017) (holding that “claims directed to a new and useful technique for using sensors to more efficiently track an object on a moving platform” were not abstract); Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048, 1050 (Fed. Cir. 2016) (holding that claims directed to “a new and useful laboratory technique for preserving hepatocytes, ” a type of liver cell, were not abstract); see also Diamond v. Diehr, 450 U.S. 175, 187 (1981) (holding that claims for a method to cure rubber that employed a formula to calculate the optimal cure time were not abstract).

         By contrast, courts have frequently invalidated claims that have a close analogy in the brick-and-mortar world, such that the claims cover “‘fundamental practices long prevalent in our system' and ‘methods of organizing human activity.'” Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1317 (Fed. Cir. 2016) (quoting Alice, 573 U.S. at 219) (alterations omitted) (finding an email processing software program to be abstract through comparison to a “brick-and-mortar” post office); Intellectual Ventures I LLC v. Symantec Corp., 100 F.Supp.3d 371, 383 (D. Del. 2015) (“Another helpful way of assessing whether the claims of the patent are directed to an abstract idea is to consider if all of the steps of the claim could be performed by human beings in a non-computerized ‘brick and mortar' context.” (citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014)).

         Courts will also (or alternatively, as the facts require) consider a related question of whether the claims are directed to a mental process or a process that could be performed with pencil and paper. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147 (Fed. Cir. 2016) (claims for translating a functional description of a logic circuit into a hardware component description of the logic circuit were patent-ineligible because the “method can be performed mentally or with pencil and paper”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (claim for verifying the validity of a credit card transaction over the Internet was patent-ineligible because the “steps can be performed in the human mind, or by a human using a pen and paper”); see also, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (claims for computer-implemented system to enable borrowers to shop for loan packages anonymously were abstract where “[t]he series of steps covered by the asserted claims . . . could all be performed by humans without a computer”).

         At all events, however, the Federal Circuit has emphasized that “the first step of the [Alice] inquiry is a meaningful one.” Enfish, 822 F.3d at 1335. In particular, the court's task is not to determine whether the claims merely “involve” an abstract idea at some level, see id., but rather to examine the claims “in their entirety to ascertain whether their character as a whole is directed to excluded subject matter, ” Internet Patents, 790 F.3d at 1346.

         2. Alice Step Two: Evaluation of Abstract Claims for an Inventive Concept

         A claim drawn to an abstract idea is not necessarily invalid if the claim's limitations- considered individually or as an ordered combination-serve to “transform the claims into a patent-eligible application.” Content Extraction, 776 F.3d at 1348. Thus, the second step of the Alice analysis (the search for an “inventive concept”) asks whether the claim contains an element or combination of elements that “ensure[s] that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself.” 573 U.S. at 217 (citation omitted).

         The U.S. Supreme Court has made clear that transforming an abstract idea to a patent-eligible application of the idea requires more than simply reciting the idea followed by “apply it.” Id. at 221 (quoting Mayo, 566 U.S. at 72). In that regard, the Federal Circuit has repeatedly held that “[f]or the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.'” Content Extraction, 776 F.3d at 1347-48 (alteration in original) (quoting Alice, 573 U.S. at 225); see also Mortg. Grader, 811 F.3d at 1324-25 (holding that “generic computer components such as an ‘interface,' ‘network,' and ‘database' . . . do not satisfy the inventive concept requirement”); Bancorp Servs., 687 F.3d at 1278 (“To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.”).

         Likewise, “[i]t is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea” where those components simply perform their “well-understood, routine, conventional” functions. In re TLI Commc'ns LLC, 823 F.3d at 613 (citation omitted) (ruling that a “telephone unit, ” a “server, ” an “image analysis unit, ” and a “control unit” limitations did not supply an inventive concept because “the recited physical components behave exactly as expected according to their ordinary use”). In Alice, for instance, the U.S. Supreme Court held “the use of a computer to obtain data, adjust account balances, and issue automated instructions” are “generic computer functions.” 573 U.S. at 225. “The question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact” that “must be proven by clear and convincing evidence.” Berkheimer, 881 F.3d at 1368. Moreover, “[t]he mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” Id. at 1369.

         In addition, the U.S. Supreme Court explained in Bilski that “limiting an abstract idea to one field of use or adding token postsolution components [does] not make the concept patentable.” 561 U.S. at 612 (citing Parker v. Flook, 437 U.S. 584 (1978)); see also Alice, 573 U.S. at 222 (same). The Federal Circuit has similarly stated that attempts “to limit the use of the abstract idea to a particular technological environment” are insufficient to render an abstract idea patent-eligible. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (internal quotation marks and citation omitted); see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015) (“An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet.”).

         By contrast, a “non-conventional and non-generic arrangement of known, conventional pieces” can amount to an inventive concept. BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). For example, in BASCOM, the Federal Circuit addressed a claim for Internet content filtering performed at “a specific location, remote from the end-users, with customizable filtering features specific to each end user.” Id. Because this “specific location” was different from the location where Internet content filtering was traditionally performed, the Federal Circuit concluded this was a “non-conventional and non-generic arrangement of known, conventional pieces” that provided an inventive concept. Id. As another example, in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., the Federal Circuit held that claims relating to solutions for managing accounting and billing data over large, disparate networks recited an inventive concept because they contained “specific enhancing limitation[s] that necessarily incorporate[d] the invention's distributed architecture.” 841 F.3d 1288, 1301 (Fed. Cir. 2016), cert. denied, 138 S.Ct. 469 (Nov. 27, 2017). The use of a “distributed architecture, ” which stored accounting data information near the source of the information in the disparate networks, transformed the claims into patentable subject matter. Id.

         3. Preemption Concerns

         In addition to these specific guidelines, courts sometimes find it helpful to assess claims against the policy rationale for § 101. The U.S. Supreme Court has recognized that the “concern that undergirds [its] § 101 jurisprudence” is that of preemption. Alice, 573 U.S. at 223. For that reason, courts have readily concluded that a claim is not patent-eligible when the claim is so abstract that it preempts “use of [the claimed] approach in all fields” and “would effectively grant a monopoly over an abstract idea.” Bilski, 561 U.S. at 612. The converse, however, is not true: “[W]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” FairWarning, 839 F.3d at 1098 (internal quotation marks omitted). That is, a claim is not eligible simply because its application of the abstract idea is narrow and other uses remain. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“Sequenom's attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter.”).


         In their consolidated motion to dismiss, Defendants contend that the asserted claims of the Patents-in-Suit are invalid because the claims fall within the “abstract ideas” exception to § 101. The Court agrees. The Court begins its analysis by identifying representative claims. The Court then applies the Alice framework described above to each of representative claims, beginning with Step One and then moving to Step Two.

         A. Scope of Analysis and Representative Claims

         The Federal Circuit has held that a district court need not expressly address each asserted claim where the court concludes that particular claims are representative because all the claims are “substantially similar and linked to the same abstract idea.” Content Extraction, 776 F.3d at 1348 (quotation marks omitted); see also Mortg. Grader, 811 F.3d at 1324 n.6 (court did not err by discussing only one claim where claims did not “differ in any manner that is material to the patent-eligibility inquiry”); Alice, 573 U.S. 224-25 (finding 208 claims to be patent-ineligible based on analysis of one representative claim). For instance, claims that “contain only minor differences in terminology but require performance of the same basic process, . . . should rise or fall together.” Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1368 n.7 (Fed. Cir. 2017) (internal quotation marks omitted). Courts may likewise “treat a claim as representative . . . if the patentee does not present any meaningful argument for the distinctive significance of any claim limitations not found in the representative claim.” Berkheimer, 881 F.3d at 1365.

         Here, Defendants contend that Claim 1 of the '002 Patent is representative of all asserted claims across the four Patents-in-Suit. Plaintiff does not believe Claim 1 of the '002 Patent is representative, and instead insists that the Court analyze each individual claim at issue in the instant case.

         The Court takes a different approach from the ones urged by the parties. The Court finds that the asserted claims can be grouped into four categories and designates a different representative claim for each category. First, claim 1 of the '002 Patent is representative of the claims that disclose a five-step method for classifying and then routing a communication between participants. Second, claim 9 of the '549 Patent is representative of the claims disclosing a particular method for classifying the communication, viz., searching a “database” for the “new second participant identifier.” '549 Patent at 38:48-54. Third, claim 26 of the '002 Patent is representative of the claims in which the communication is “blocked” instead of being “established.” '002 Patent at 42:32-38. Fourth, claim 21 of the '762 Patent is representative of the claims in which an “error message” is produced. '762 Patent at 40:10-14.

         The following table summarizes the asserted claims and the corresponding representative claims.

Representative Claim

Asserted Claims

Claim 1 of the '002 Patent

Claims 12, 22, 29 of the '002 Patent

Claims 2, 6, 17 of the '549 Patent

Claim 9 of the '549 Patent

Claim 24 of the '549 Patent

Claims 3, 4, 12 of the '330 Patent

Claims 16, 30 of the '762 Patent

Claim 26 of the '002 Patent

Claim 14 of the '330 Patent

Claim 12 of the '549 Patent

Claim 21 of the '762 Patent

Claims 6, 26 of the '762 Patent

         1. Representative Claim 1: Claim 1 of the '002 Patent

         Claim 1 of the '002 Patent (“Representative Claim 1”) recites:

1. A method of routing a communication in a communication network system between an Internet-connected first participant device associated with a first participant and a second participant device associated with a second participant, the method comprising:
in response to initiation of the communication by the first participant device, receiving, by a controller comprising at least one processor, over an Internet protocol (IP) network a first participant identifier and a second participant identifier, the second participant identifier being associated with the second participant device;
causing the at least one processor to access a database comprising user profiles, using the first participant identifier, each user profile associating a respective plurality of attributes with a respective user, to locate a plurality of first participant attributes;
processing the second participant identifier, using the at least one processor, based on at least one of the plurality of first participant attributes obtained from a user profile for the first participant, to produce a new second participant identifier;
classifying the communication, based on the new second participant identifier, as a system communication or an external network communication, using the at least one processor;
when the communication is classified as a system communication, producing a system routing message identifying an Internet address associated with the second participant device, using the at least one processor, wherein the system routing message causes the communication to be established to the second participant device; and
when the communication is classified as an external network communication, producing an external network routing message identifying an Internet address associated with a gateway to an external network, using the at least one processor, wherein the external network routing message causes the communication to the second ...

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