TriDim Innovations LLC v. Amazon.Com,Inc.

Filing 41

ORDER by Judge James Donato granting 27 Motion to Dismiss. (jdlc3S, COURT STAFF) (Filed on 9/19/2016)

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1 2 3 UNITED STATES DISTRICT COURT 4 NORTHERN DISTRICT OF CALIFORNIA 5 6 TRIDIM INNOVATIONS LLC, Plaintiff, 7 8 9 10 Case No. 3:15-cv-05477-JD ORDER RE DISMISSAL v. Re: Dkt. No. 27 AMAZON.COM, INC., Defendant. United States District Court Northern District of California 11 12 TriDim Innovations LLC (“TriDim”) filed this patent infringement suit against 13, Inc. (“Amazon”) in December 2015. Dkt. No. 1. The case involves two patents 14 owned by TriDim: (1) U.S. Patent No. 5,838,326, entitled “System for Moving Document Objects 15 in a 3-D Workspace” (“’326 patent”); and (2) U.S. Patent No. 5,847,709, entitled “3-D Document 16 Workspace with Focus, Immediate and Tertiary Spaces” (“’709 patent”). Dkt. No. 1 ¶¶ 6-12. 17 TriDim alleges that the “carousel” feature in Amazon’s Kindle Fire and Fire Phone infringes the 18 two patents. Amazon moves to dismiss TriDim’s claims for invalidity under 35 U.S.C. § 101. 19 Dkt. No. 27. The Court held oral argument and now dismisses the complaint with prejudice. 20 BACKGROUND 21 Inventors from the Xerox Corporation filed the ’326 and ’709 patents in separate 22 applications on September 26, 1996. Dkt. Nos. 1-1, 1-2. The patents issued on November 17, 23 1998 and December 8, 1998, respectively, and are both set to expire on September 26, 2016. Id. 24 TriDim obtained assignment of the patents. Dkt. No. 1 ¶¶ 6, 10. At the hearing on this motion, 25 the parties advised the Court that the only claims at issue here are claim 14 of the ‘326 patent and 26 claims 1 and 9 of the ‘709 patent. Dkt. No. 38. 27 28 The two patents have almost identical summaries and specifications. They both claim the invention of “[a] three dimensional document workspace for interacting with large numbers of 1 document objects,” designed to help “balanc[e] the necessary tradeoffs of rapid access, number of 2 collections and associated documents, and available screen space.” Dkt. No. 1-1 at 2:65-66, 4:10- 3 14; Dkt. No. 1-2 at 2:66-67, 4:10-14. Specifically, the patents provide a system for 4 “hierarchically” dividing a computer workspace for documents into three areas depending on the 5 user’s “interaction rates” with certain documents: (1) “focus space” where “direct interaction with 6 a document object occurs”; (2) “immediate memory space” where “document objects that are in 7 use, but not currently being interacted with” are placed; and (3) “tertiary space” where “many 8 document objects . . . that are not currently in use” are placed. Dkt. No. 1-1 at 3:14-33; Dkt. No. 9 1-2 at 3:15-34. In the specification, the patentee analogizes these spaces, respectively, to (1) a “desk” where documents in use are placed, (2) a space behind the desk where objects are depicted 11 United States District Court Northern District of California 10 as “smaller in size” as they get a further “distance back (i.e. in the z-direction),” and (3) a 12 “bookshelf” for items “not currently in use.” Dkt. No. 1-1 at 3:21-33. 13 Each of the asserted claims describes a “computer controlled display system” with these 14 features. For example, claim 14 of the ’326 patent, which is typical of the asserted claims in both 15 patents, covers: 16 17 1. A computer controlled display system for displaying document objects in a three-dimensional document workspace on a display, said computer controlled display system comprising: 18 document receiving means for receiving document objects; 19 positioning means for receiving user input for positioning document objects within said three-dimensional document workspace; 20 21 22 23 24 25 26 27 workspace display circuitry for generating display information for displaying said three-dimensional document workspace and said document objects, said workspace display circuitry comprising: circuitry for displaying a focus space, said focus space for detail display of a document object; circuitry for displaying an immediate space, said immediate space for ephemeral positioning of document objects that are in use but not in focus; and circuitry for displaying a tertiary space, said tertiary space for positioning document objects that are not in use. Dkt No. 1-1 at 12:57-13:10. All the asserted claims describe a “computer controlled display 28 2 1 system” similar to this one, though claim 1 of the ’709 patent lacks a “positioning means” 2 element. See Dkt. No. 1-2 at 10:64-11:14. The “positioning means” element of claim 9 of the ’709 patent and claim 14 of the ’326 3 4 allows movement of document objects on the workspace. The specifications describe a few types 5 of “gestures” that may be used to move documents among the focus, intermediate, and tertiary 6 spaces. One called “touch [and] drop” consists of touching a document object by “positioning a 7 cursor over it and depressing a cursor control button, tracing the cursor movement with a line, and 8 then dropping the object by releasing the cursor control button at the end point of the line.” Dkt. 9 No. 1-1 at 8:65-9:2; Dkt. No. 1-2 at 9:2-6. Another gesture, “flicking,” consists of “touching the object and ‘flicking’ it using the cursor control device in a desired direction.” Dkt. No. 1-1 at 11 United States District Court Northern District of California 10 9:48-56; Dkt. No. 1-2 at 9:52-60.1 The patents do not involve special software or hardware of any type. The system and 12 13 gestures can be used on a “Silicon Graphics workstation,” as this system “provides for generating 14 software programs which manipulate graphical objects in a three dimensional space, so description 15 of programming techniques for rendering graphical objects in a three dimensional space is not 16 deemed necessary” in the specification. Dkt. No 1-1 at 5:29-37; Dkt. No. 1-2 at 5:33-41. In 17 addition, the patent states that a person of skill in the art could implement the invention on any 18 commercially available computer with the functionality for “manipulating graphical objects in a 19 three dimensional space.” Dkt. No. 1-1 at 5:38-43; Dkt. No. 1-2 at 5:42-47. Amazon contends that the patents are invalid under 35 U.S.C. Section 101, as applied in 20 21 Alice Corp. Pty. Ltd v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). According to Amazon, the asserted 22 claims are directed to the abstract idea of “retrieving and arranging documents,” and fail to recite 23 any additional elements that transform the claims into patentable subject matter. Dkt. No. 27 at 24 12, 14. 25 26 27 1 28 To the extent the means of moving document objects involve a “pointer device having a switch,” they are covered by Claims 1 and 6 of the ‘326 patent and are outside the scope of this order. 3 DISCUSSION 1 2 3 I. LEGAL STANDARDS Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss a complaint 4 if it fails to state a claim upon which relief can be granted. To survive a motion to dismiss, the 5 plaintiff must allege “enough facts to state a claim to relief that is plausible on its face.” Bell 6 Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the 7 plaintiff pleads factual content that allows the court to draw the reasonable inference that the 8 defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) 9 (citing Twombly, 550 U.S. at 556). This motion involves determining the scope of patent eligibility under 35 U.S.C. § 101. In 11 United States District Court Northern District of California 10 deciding the motion, the Court need not construe the patent claims. Although every issued patent 12 is presumed to be valid absent clear and convincing evidence to the contrary, courts may find 13 patents invalid at the pleading stage and prior to formal claim construction. See, e.g., buySAFE, 14 Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (affirming a district court’s finding of 15 invalidity under Section 101 at the pleading stage); Open Text S.A. v. Alfresco Software Ltd, No. 16 13-CV-04843-JD, 2014 WL 4684429, at *5 (N.D. Cal. Sept. 19, 2014) (granting a 12(b)(6) motion 17 because the asserted patents were ineligible). “Although the determination of patent eligibility 18 requires a full understanding of the basic character of the claimed subject matter, claim 19 construction is not an inviolable prerequisite to a validity determination under § 101.” Content 20 Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1349 (Fed. Cir. 21 2014), cert. denied, 136 S.Ct. 119 (2015). In this case, parties do not dispute the proper 22 construction of any terms in the asserted claims, and so the Court finds it unnecessary to engage in 23 claim construction before addressing the validity of the patents under Section 101. 24 Under Section 101, the scope of patentable subject matter includes “any new and useful 25 process, machine, manufacture, or composition of matter, or any new and useful improvement 26 thereof.” 35 U.S.C. § 101. But “laws of nature, physical phenomena, and abstract ideas” are three 27 “specific exceptions to § 101’s broad patent-eligibility principles.” Bilski v. Kappos, 561 U.S. 28 593, 601 (2010). In applying the Section 101 exceptions, the Court must distinguish between 4 1 patents that claim the “building blocks of human ingenuity” and those that “integrate the building 2 blocks into something more,” because overbroad patent protection “would risk disproportionately 3 tying up the use of the underlying ideas.” Alice, 134 S.Ct. at 2354-55 (internal quotation marks 4 and citation omitted). In Alice, the Supreme Court set out a two-part test for determining whether a claim is 6 patent-eligible. The Court must first “determine whether the claims at issue are directed to a 7 patent-ineligible concept.” Id. at 2347. For computing-related functionality, the inquiry at this 8 first step “asks whether the focus of the claims is on the specific asserted improvement in 9 computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a 10 process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” 11 United States District Court Northern District of California 5 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). This inquiry 12 distinguishes between claims “directed to a specific improvement to computer functionality,” 13 which may be patentable, and claims that recite only “generalized steps to be performed on a 14 computer using conventional computer activity,” which would not be patentable. Id. at 1338. 15 If a patent is directed to a patent-ineligible concept, then the second step of the Alice test 16 requires the Court to search for an “inventive concept” that may save the patent. IPLearn-Focus, 17 LLC v. Microsoft Corp., No. 14-CV-00151-JD, 2015 WL 4192092, at *4 (N.D. Cal. July 10, 2015) 18 (internal quote omitted), aff'd, 2016 WL 3667604 (Fed. Cir. July 11, 2016). This is a “make-or- 19 break step for patent eligibility” that requires “an element or combination of elements that is 20 ‘sufficient to ensure that the patent in practice amounts to significantly more than’” a patent on an 21 ineligible concept. Id. (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 22 1344 (Fed. Cir. 2015)). As the Supreme Court and the Federal Circuit have made perfectly clear, 23 merely implementing an abstract idea on conventional computer technology is not enough. Patent 24 eligibility requires “concrete improvements in the recited computer technology.” Enfish, 822 F.3d 25 at 1339; see also Bilski, 561 U.S. at 610–11 (limiting use of an abstract idea “to a particular 26 technological environment” insufficient for eligibility); In re TLI Commc'ns LLC Patent Litig., 27 823 F.3d 607, 613 (Fed. Cir. 2016) (“[T]he claims’ recitation of a ‘telephone unit,’ a ‘server,’ an 28 ‘image analysis unit,’ and a ‘control unit’ fail to add an inventive concept sufficient to bring the 5 1 abstract idea into the realm of patentability.”). 2 II. THE CLAIMS ARE NOT PATENT ELIGIBLE A. 4 By their plain language, TriDim’s claims are drawn to the very basic concept of retrieving 5 and arranging documents based on frequency of use. Claim 14 of the ‘326 patent claims a way of 6 displaying document objects on a three-dimensional workspace, comprising of “[1] document 7 receiving means . . . ; [2] positioning means . . . ;[3] workspace display circuitry . . . comprising 8 circuitry for displaying a focus space . . . for detail display of a document object; circuitry for 9 displaying an immediate space . . . for ephemeral positioning of document objects that are in use 10 but not in focus; and circuitry for displaying a tertiary space . . . for positioning document objects 11 United States District Court Northern District of California 3 that are not in use.” Dkt. No. 33-1, 12:57-13:10. Claims 1 and 9 of the ‘709 patent are 12 substantially similar in language. Dkt. No. 33-2, 10:64-11:14, 12:5-23. Despite the repeated use 13 of the word “circuitry,” no such circuitry is disclosed in the patents. Much like the unpatentable 14 subject matter in TLI Communications, the claims in question here are defined only in terms of 15 their functions, which are directed to the abstract idea of retrieving and arranging documents by 16 relative frequency of use. In re TLI Commc'ns LLC Patent Litig., 823 F.3d at 613 (“[T]he claims, 17 as noted, are simply directed to the abstract idea of classifying and storing digital images in an 18 organized manner.”). 19 The Claims are Directed to an Abstract Idea None of TriDim’s arguments suggest a different conclusion. TriDim emphasizes that the 20 patents are “directed to a computer user interface,” but does not explain why or how this label 21 transforms the abstract idea into a patent-eligible invention. Dkt. No. 33 at 15 (emphasis in 22 original). TriDim also says that the limitation of dividing a computer display into three spaces 23 “confine[s] the invention to a specific system and method” and consequently is “not an abstract 24 idea.” Dkt. No. 33 at 13. This is mere window dressing. The patents themselves analogize the 25 “immediate memory” and “tertiary” spaces to a “desk” and a “bookshelf.” Dkt. No. 33-1, 3:23- 26 33; Dkt. No. 33-2, 3:24-34. This shows that the patents represent nothing more than the abstract 27 idea of placing more frequently used documents in a space that is more easily accessible -- an 28 organizational system people intuitively use in a variety of contexts. See Genetic Techs. Ltd. v. 6 1 Merial L.L.C., 818 F.3d 1369, 1378 (Fed. Cir. 2016) (quoting CyberSource Corp. v. Retail 2 Decisions, Inc., 654 F.3d 1366, 1373 (Fed.Cir.2011)) (“[M]ethods which can be performed 3 entirely in the human mind are unpatentable.”) (emphasis in original). 4 As a final defense, TriDim contends that the patents are not directed to an abstract idea, because “the claims were ‘necessarily rooted in computer technology in order to overcome a 6 problem specifically arising in the realm of computer networks.’” Dkt. No. 33 at 14 (citing DDR 7 Holdings, LLC v., L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). But that argument 8 misses the mark because the Federal Circuit’s analysis in DDR Holdings was under the second 9 prong of the Alice test, addressing whether there is “an inventive concept sufficient to transform 10 the claimed abstract idea into a patent-eligible application.” Alice Corp., 124 S. Ct. at 2357; see 11 United States District Court Northern District of California 5 DDR Holdings, LLC, 773 F.3d at 1257 (“[U]nder any of these characterizations of the abstract 12 idea, the ‘399 patent’s claims satisfy Mayo/Alice step two.”). 13 B. 14 The test of whether the claims present an inventive concept sufficient to save them from The Claims Lack an Inventive Concept 15 ineligible abstraction also comes out against TriDim. Unlike the claims in DDR Holdings, neither 16 the problem Tridim’s patents purportedly solve (limited screen space for the display and 17 organization of documents) nor the suggested solution (arranging documents by frequency of use) 18 is “necessarily rooted in computer technology.” DDR Holdings, LLC, 773 F.3d at 1257; Dkt. No. 19 33 at 14. To the contrary, storing documents that are less frequently used in a library or on a 20 bookshelf as opposed to on one’s desk is a common solution to a common problem of limited 21 space in physical offices everywhere. It is hard to picture any office, dorm room, or workspace 22 since the advent of the printing press that did not follow this basic concept of organization. By 23 TriDim’s own admission, the patents were “specifically intended to be used with a typical 24 computer.” Dkt. No. 33 at 8. But applying a “commonplace” method of organization to a 25 “particular technological environment[]” does not constitute an inventive concept, and the patents 26 here fall squarely within the type of inventions that the Supreme Court explicitly found invalid in 27 Alice. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015); see Alice, 28 134 S. Ct. 2347 at 2359. 7 1 The elements of the claims that relate to the means of moving and positioning the document objects suffer from the same lack of inventive concept. According to TriDim, the 3 “touch and drop” and “flicking” gestures were “improvements specifically adapted for a 3-D 4 space” because “known techniques for operating a 2-D workspace such as drag and drop 5 techniques were not efficient.” Dkt. No. 33 at 15. But the patents do not disclose any specific 6 ways, hardware or software, that a user may program or implement these gestures. See Dkt. Nos. 7 33-1, 33-2. Instead, the claims are no more than circular definitions. For example, Claim 14 of 8 the patent ‘326 claims a “computer controlled display system” being comprised of among other 9 things “document receiving means for receiving document objects; [and] positioning means . . . 10 for positioning document objects within said three-dimensional document workspace.” Dkt. No. 11 United States District Court Northern District of California 2 33-1, 12:61-65. The “positioning means” is in turn defined as being comprised of “a selection 12 means for selecting a document object; and means for indicating a destination.” Id. at 13:12-14:3. 13 And the “selection means” and “means for indicating a destination” are defined in equally circular 14 terms. Id. at 14:4-11. These elements that are defined only in terms of their functionalities, 15 whether considered separately or as an ordered combination, fall short of constituting an inventive 16 concept. 17 An additional problem for TriDim is that the patents and claims here, which are defined in 18 terms of their functionalities only, raise a serious preemption concern. See Vehicle Intelligence & 19 Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App'x 914, 918 (Fed. Cir. 2015). TriDim tries to 20 minimize the preemption threat by comparing the patents to the prior art identified in the ‘326 and 21 ‘709 patents. Dkt. No. 33, 15-16. But the “mere existence of a non-preempted use of an abstract 22 idea does not prove that a claim is drawn to patent-eligible subject matter.” Id. Moreover, the 23 very fact that TriDim brought this patent infringement suit against Amazon’s carousel feature 24 makes its disclaimer of preemption sound rather hollow. If TriDim is in fact correct that a slight 25 change in the way the documents are stacked or organized makes a particular computer user 26 interface non-preempted, Dkt. No. 33 at 15-16, Amazon’s carousel feature surely cannot infringe 27 TriDim’s patents. TriDim cannot circumvent “the prohibition against patent abstract ideas” “by 28 attempting to limit the use of [the idea],” even if “doing so reduces the amount of innovation that 8 1 would be preempted.” IPLearn-Focus, 2015 WL 4192092, at *6. 2 CONCLUSION 3 Claim 14 of the ‘326 patent and Claims 1 and 9 of the ‘709 patent constitute a wholly 4 generic computer implementation of the abstract idea of retrieving and arranging documents based 5 on relative frequency of use. The motion to dismiss is granted. Because the Court finds that any 6 amendment would be futile, the dismissal is with prejudice. 7 8 IT IS SO ORDERED. Dated: September 19, 2016 9 10 JAMES DONATO United States District Judge United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9

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