TriDim Innovations LLC v. Amazon.Com,Inc.
Filing
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ORDER by Judge James Donato granting 27 Motion to Dismiss. (jdlc3S, COURT STAFF) (Filed on 9/19/2016)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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TRIDIM INNOVATIONS LLC,
Plaintiff,
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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
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TriDim Innovations LLC (“TriDim”) filed this patent infringement suit against
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Amazon.com, Inc. (“Amazon”) in December 2015. Dkt. No. 1. The case involves two patents
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owned by TriDim: (1) U.S. Patent No. 5,838,326, entitled “System for Moving Document Objects
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in a 3-D Workspace” (“’326 patent”); and (2) U.S. Patent No. 5,847,709, entitled “3-D Document
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Workspace with Focus, Immediate and Tertiary Spaces” (“’709 patent”). Dkt. No. 1 ¶¶ 6-12.
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TriDim alleges that the “carousel” feature in Amazon’s Kindle Fire and Fire Phone infringes the
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two patents. Amazon moves to dismiss TriDim’s claims for invalidity under 35 U.S.C. § 101.
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Dkt. No. 27. The Court held oral argument and now dismisses the complaint with prejudice.
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BACKGROUND
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Inventors from the Xerox Corporation filed the ’326 and ’709 patents in separate
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applications on September 26, 1996. Dkt. Nos. 1-1, 1-2. The patents issued on November 17,
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1998 and December 8, 1998, respectively, and are both set to expire on September 26, 2016. Id.
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TriDim obtained assignment of the patents. Dkt. No. 1 ¶¶ 6, 10. At the hearing on this motion,
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the parties advised the Court that the only claims at issue here are claim 14 of the ‘326 patent and
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claims 1 and 9 of the ‘709 patent. Dkt. No. 38.
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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
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document objects,” designed to help “balanc[e] the necessary tradeoffs of rapid access, number of
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collections and associated documents, and available screen space.” Dkt. No. 1-1 at 2:65-66, 4:10-
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14; Dkt. No. 1-2 at 2:66-67, 4:10-14. Specifically, the patents provide a system for
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“hierarchically” dividing a computer workspace for documents into three areas depending on the
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user’s “interaction rates” with certain documents: (1) “focus space” where “direct interaction with
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a document object occurs”; (2) “immediate memory space” where “document objects that are in
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use, but not currently being interacted with” are placed; and (3) “tertiary space” where “many
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document objects . . . that are not currently in use” are placed. Dkt. No. 1-1 at 3:14-33; Dkt. No.
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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
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United States District Court
Northern District of California
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as “smaller in size” as they get a further “distance back (i.e. in the z-direction),” and (3) a
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“bookshelf” for items “not currently in use.” Dkt. No. 1-1 at 3:21-33.
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Each of the asserted claims describes a “computer controlled display system” with these
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features. For example, claim 14 of the ’326 patent, which is typical of the asserted claims in both
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patents, covers:
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A computer controlled display system for displaying
document objects in a three-dimensional document workspace on a
display, said computer controlled display system comprising:
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document receiving means for receiving document objects;
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positioning means for receiving user input for positioning document
objects within said three-dimensional document workspace;
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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
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system” similar to this one, though claim 1 of the ’709 patent lacks a “positioning means”
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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
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allows movement of document objects on the workspace. The specifications describe a few types
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of “gestures” that may be used to move documents among the focus, intermediate, and tertiary
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spaces. One called “touch [and] drop” consists of touching a document object by “positioning a
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cursor over it and depressing a cursor control button, tracing the cursor movement with a line, and
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then dropping the object by releasing the cursor control button at the end point of the line.” Dkt.
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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
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United States District Court
Northern District of California
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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
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gestures can be used on a “Silicon Graphics workstation,” as this system “provides for generating
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software programs which manipulate graphical objects in a three dimensional space, so description
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of programming techniques for rendering graphical objects in a three dimensional space is not
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deemed necessary” in the specification. Dkt. No 1-1 at 5:29-37; Dkt. No. 1-2 at 5:33-41. In
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addition, the patent states that a person of skill in the art could implement the invention on any
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commercially available computer with the functionality for “manipulating graphical objects in a
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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
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Alice Corp. Pty. Ltd v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). According to Amazon, the asserted
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claims are directed to the abstract idea of “retrieving and arranging documents,” and fail to recite
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any additional elements that transform the claims into patentable subject matter. Dkt. No. 27 at
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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.
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DISCUSSION
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I.
LEGAL STANDARDS
Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss a complaint
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if it fails to state a claim upon which relief can be granted. To survive a motion to dismiss, the
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plaintiff must allege “enough facts to state a claim to relief that is plausible on its face.” Bell
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Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the
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plaintiff pleads factual content that allows the court to draw the reasonable inference that the
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defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
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(citing Twombly, 550 U.S. at 556).
This motion involves determining the scope of patent eligibility under 35 U.S.C. § 101. In
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United States District Court
Northern District of California
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deciding the motion, the Court need not construe the patent claims. Although every issued patent
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is presumed to be valid absent clear and convincing evidence to the contrary, courts may find
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patents invalid at the pleading stage and prior to formal claim construction. See, e.g., buySAFE,
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Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (affirming a district court’s finding of
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invalidity under Section 101 at the pleading stage); Open Text S.A. v. Alfresco Software Ltd, No.
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13-CV-04843-JD, 2014 WL 4684429, at *5 (N.D. Cal. Sept. 19, 2014) (granting a 12(b)(6) motion
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because the asserted patents were ineligible). “Although the determination of patent eligibility
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requires a full understanding of the basic character of the claimed subject matter, claim
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construction is not an inviolable prerequisite to a validity determination under § 101.” Content
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Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1349 (Fed. Cir.
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2014), cert. denied, 136 S.Ct. 119 (2015). In this case, parties do not dispute the proper
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construction of any terms in the asserted claims, and so the Court finds it unnecessary to engage in
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claim construction before addressing the validity of the patents under Section 101.
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Under Section 101, the scope of patentable subject matter includes “any new and useful
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process, machine, manufacture, or composition of matter, or any new and useful improvement
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thereof.” 35 U.S.C. § 101. But “laws of nature, physical phenomena, and abstract ideas” are three
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“specific exceptions to § 101’s broad patent-eligibility principles.” Bilski v. Kappos, 561 U.S.
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593, 601 (2010). In applying the Section 101 exceptions, the Court must distinguish between
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patents that claim the “building blocks of human ingenuity” and those that “integrate the building
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blocks into something more,” because overbroad patent protection “would risk disproportionately
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tying up the use of the underlying ideas.” Alice, 134 S.Ct. at 2354-55 (internal quotation marks
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and citation omitted).
In Alice, the Supreme Court set out a two-part test for determining whether a claim is
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patent-eligible. The Court must first “determine whether the claims at issue are directed to a
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patent-ineligible concept.” Id. at 2347. For computing-related functionality, the inquiry at this
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first step “asks whether the focus of the claims is on the specific asserted improvement in
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computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a
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process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”
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United States District Court
Northern District of California
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). This inquiry
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distinguishes between claims “directed to a specific improvement to computer functionality,”
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which may be patentable, and claims that recite only “generalized steps to be performed on a
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computer using conventional computer activity,” which would not be patentable. Id. at 1338.
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If a patent is directed to a patent-ineligible concept, then the second step of the Alice test
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requires the Court to search for an “inventive concept” that may save the patent. IPLearn-Focus,
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LLC v. Microsoft Corp., No. 14-CV-00151-JD, 2015 WL 4192092, at *4 (N.D. Cal. July 10, 2015)
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(internal quote omitted), aff'd, 2016 WL 3667604 (Fed. Cir. July 11, 2016). This is a “make-or-
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break step for patent eligibility” that requires “an element or combination of elements that is
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‘sufficient to ensure that the patent in practice amounts to significantly more than’” a patent on an
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ineligible concept. Id. (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
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1344 (Fed. Cir. 2015)). As the Supreme Court and the Federal Circuit have made perfectly clear,
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merely implementing an abstract idea on conventional computer technology is not enough. Patent
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eligibility requires “concrete improvements in the recited computer technology.” Enfish, 822 F.3d
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at 1339; see also Bilski, 561 U.S. at 610–11 (limiting use of an abstract idea “to a particular
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technological environment” insufficient for eligibility); In re TLI Commc'ns LLC Patent Litig.,
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823 F.3d 607, 613 (Fed. Cir. 2016) (“[T]he claims’ recitation of a ‘telephone unit,’ a ‘server,’ an
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‘image analysis unit,’ and a ‘control unit’ fail to add an inventive concept sufficient to bring the
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abstract idea into the realm of patentability.”).
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II.
THE CLAIMS ARE NOT PATENT ELIGIBLE
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By their plain language, TriDim’s claims are drawn to the very basic concept of retrieving
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and arranging documents based on frequency of use. Claim 14 of the ‘326 patent claims a way of
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displaying document objects on a three-dimensional workspace, comprising of “[1] document
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receiving means . . . ; [2] positioning means . . . ;[3] workspace display circuitry . . . comprising
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circuitry for displaying a focus space . . . for detail display of a document object; circuitry for
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displaying an immediate space . . . for ephemeral positioning of document objects that are in use
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but not in focus; and circuitry for displaying a tertiary space . . . for positioning document objects
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United States District Court
Northern District of California
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that are not in use.” Dkt. No. 33-1, 12:57-13:10. Claims 1 and 9 of the ‘709 patent are
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substantially similar in language. Dkt. No. 33-2, 10:64-11:14, 12:5-23. Despite the repeated use
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of the word “circuitry,” no such circuitry is disclosed in the patents. Much like the unpatentable
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subject matter in TLI Communications, the claims in question here are defined only in terms of
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their functions, which are directed to the abstract idea of retrieving and arranging documents by
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relative frequency of use. In re TLI Commc'ns LLC Patent Litig., 823 F.3d at 613 (“[T]he claims,
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as noted, are simply directed to the abstract idea of classifying and storing digital images in an
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organized manner.”).
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The Claims are Directed to an Abstract Idea
None of TriDim’s arguments suggest a different conclusion. TriDim emphasizes that the
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patents are “directed to a computer user interface,” but does not explain why or how this label
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transforms the abstract idea into a patent-eligible invention. Dkt. No. 33 at 15 (emphasis in
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original). TriDim also says that the limitation of dividing a computer display into three spaces
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“confine[s] the invention to a specific system and method” and consequently is “not an abstract
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idea.” Dkt. No. 33 at 13. This is mere window dressing. The patents themselves analogize the
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“immediate memory” and “tertiary” spaces to a “desk” and a “bookshelf.” Dkt. No. 33-1, 3:23-
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33; Dkt. No. 33-2, 3:24-34. This shows that the patents represent nothing more than the abstract
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idea of placing more frequently used documents in a space that is more easily accessible -- an
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organizational system people intuitively use in a variety of contexts. See Genetic Techs. Ltd. v.
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Merial L.L.C., 818 F.3d 1369, 1378 (Fed. Cir. 2016) (quoting CyberSource Corp. v. Retail
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Decisions, Inc., 654 F.3d 1366, 1373 (Fed.Cir.2011)) (“[M]ethods which can be performed
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entirely in the human mind are unpatentable.”) (emphasis in original).
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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
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problem specifically arising in the realm of computer networks.’” Dkt. No. 33 at 14 (citing DDR
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Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). But that argument
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misses the mark because the Federal Circuit’s analysis in DDR Holdings was under the second
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prong of the Alice test, addressing whether there is “an inventive concept sufficient to transform
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the claimed abstract idea into a patent-eligible application.” Alice Corp., 124 S. Ct. at 2357; see
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United States District Court
Northern District of California
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DDR Holdings, LLC, 773 F.3d at 1257 (“[U]nder any of these characterizations of the abstract
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idea, the ‘399 patent’s claims satisfy Mayo/Alice step two.”).
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B.
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The test of whether the claims present an inventive concept sufficient to save them from
The Claims Lack an Inventive Concept
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ineligible abstraction also comes out against TriDim. Unlike the claims in DDR Holdings, neither
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the problem Tridim’s patents purportedly solve (limited screen space for the display and
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organization of documents) nor the suggested solution (arranging documents by frequency of use)
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is “necessarily rooted in computer technology.” DDR Holdings, LLC, 773 F.3d at 1257; Dkt. No.
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33 at 14. To the contrary, storing documents that are less frequently used in a library or on a
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bookshelf as opposed to on one’s desk is a common solution to a common problem of limited
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space in physical offices everywhere. It is hard to picture any office, dorm room, or workspace
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since the advent of the printing press that did not follow this basic concept of organization. By
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TriDim’s own admission, the patents were “specifically intended to be used with a typical
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computer.” Dkt. No. 33 at 8. But applying a “commonplace” method of organization to a
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“particular technological environment[]” does not constitute an inventive concept, and the patents
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here fall squarely within the type of inventions that the Supreme Court explicitly found invalid in
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Alice. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015); see Alice,
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134 S. Ct. 2347 at 2359.
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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
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“touch and drop” and “flicking” gestures were “improvements specifically adapted for a 3-D
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space” because “known techniques for operating a 2-D workspace such as drag and drop
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techniques were not efficient.” Dkt. No. 33 at 15. But the patents do not disclose any specific
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ways, hardware or software, that a user may program or implement these gestures. See Dkt. Nos.
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33-1, 33-2. Instead, the claims are no more than circular definitions. For example, Claim 14 of
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the patent ‘326 claims a “computer controlled display system” being comprised of among other
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things “document receiving means for receiving document objects; [and] positioning means . . .
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for positioning document objects within said three-dimensional document workspace.” Dkt. No.
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United States District Court
Northern District of California
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33-1, 12:61-65. The “positioning means” is in turn defined as being comprised of “a selection
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means for selecting a document object; and means for indicating a destination.” Id. at 13:12-14:3.
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And the “selection means” and “means for indicating a destination” are defined in equally circular
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terms. Id. at 14:4-11. These elements that are defined only in terms of their functionalities,
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whether considered separately or as an ordered combination, fall short of constituting an inventive
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concept.
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An additional problem for TriDim is that the patents and claims here, which are defined in
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terms of their functionalities only, raise a serious preemption concern. See Vehicle Intelligence &
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Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App'x 914, 918 (Fed. Cir. 2015). TriDim tries to
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minimize the preemption threat by comparing the patents to the prior art identified in the ‘326 and
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‘709 patents. Dkt. No. 33, 15-16. But the “mere existence of a non-preempted use of an abstract
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idea does not prove that a claim is drawn to patent-eligible subject matter.” Id. Moreover, the
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very fact that TriDim brought this patent infringement suit against Amazon’s carousel feature
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makes its disclaimer of preemption sound rather hollow. If TriDim is in fact correct that a slight
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change in the way the documents are stacked or organized makes a particular computer user
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interface non-preempted, Dkt. No. 33 at 15-16, Amazon’s carousel feature surely cannot infringe
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TriDim’s patents. TriDim cannot circumvent “the prohibition against patent abstract ideas” “by
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attempting to limit the use of [the idea],” even if “doing so reduces the amount of innovation that
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would be preempted.” IPLearn-Focus, 2015 WL 4192092, at *6.
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CONCLUSION
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Claim 14 of the ‘326 patent and Claims 1 and 9 of the ‘709 patent constitute a wholly
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generic computer implementation of the abstract idea of retrieving and arranging documents based
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on relative frequency of use. The motion to dismiss is granted. Because the Court finds that any
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amendment would be futile, the dismissal is with prejudice.
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IT IS SO ORDERED.
Dated: September 19, 2016
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JAMES DONATO
United States District Judge
United States District Court
Northern District of California
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